JUDGMENT OF THE GENERAL COURT (Third Chamber)
23 September 2014 (*)
(Community trade mark — Opposition proceedings — Application for Community figurative mark SO’BiO ētic — Earlier Community and national word and figurative marks SO…? — Relative grounds for refusal — No likelihood of confusion — Article 8(1)(b) and (5) of Regulation (EC) No 207/2009 — Lack of genuine use of the earlier mark — Article 42(2) and (3) of Regulation No 207/2009)
In Case T‑341/13,
Groupe Léa Nature SA, established in Périgny (France), represented by S. Arnaud, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos and V. Melgar, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being,
Debonair Trading Internacional Lda, established in Funchal (Portugal), represented by T. Alkin, Barrister,
ACTION brought against the decision of the First Board of Appeal of OHIM of 26 March 2013 (Case R 203/2011-1), relating to opposition proceedings between Debonair Trading Internacional Lda and Groupe Léa Nature SA,
THE GENERAL COURT (Third Chamber),
composed of S. Papasavvas (Rapporteur), President, N.J. Forwood and E. Bieliūnas, Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Registry of the General Court on 27 June 2013,
having regard to the response of OHIM lodged at the Court Registry on 3 October 2013,
having regard to the response of the intervener lodged at the Court Registry on 20 September 2013,
having regard to the decision of 28 November 2013 refusing to allow the lodging of a reply,
further to the hearing on 24 June 2014,
gives the following
Judgment
Background to the dispute
1 On 27 March 2008, the applicant, Groupe Léa Nature SA, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark 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, inter alia, Classes 3 and 25 of the Nice Agreement of 15 June 1957 concerning the international classification of goods and services for the purposes of the registration of marks, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, degreasing and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; eau de toilette, products for perfuming linen, perfumery, bases for flower and plant perfumes, perfumed micro-capsules, incense, scented water, oils for perfumes and scents, shampoos, oils for cosmetic purposes, cosmetic creams, milks for the face and body, cleansing milk, ointments for cosmetic purposes, cosmetic preparations for baths, not for medical purposes, bath salts, not for medical purposes; deodorants for personal use; aromatics [essential oils], scented wood, eau de Cologne, disinfectant soaps and air fresheners, lavender water, fumigation preparations [perfumes], foam baths, not for medical purposes, cosmetic preparations for slimming purposes, beauty masks, sun-tanning preparations [cosmetics], depilatory preparations, cosmetics for animals, make-up removing preparations, lotions for cosmetic purposes, make-up preparations, nail care preparations, exfoliating cosmetic preparations, mint for perfumery, perfumed potpourris, soaps for foot perspiration, tissues impregnated with cosmetic lotions, scented water, extracts of flowers and plants (perfumery), mint essence for perfumery, pastilles and chewing gum for cosmetic purposes, all the aforesaid products being derived from organic farming or made from products derived therefrom’;
– Class 25: ‘Clothes (clothing), footwear (except orthopaedic footwear), headgear, dressing gowns, shirts, T-shirts, scarves, bandanas, hats, helmets, overcoats, parkas, all the aforesaid products being derived from organic farming or made from goods derived from organic farming’.
4 The application for a Community trade mark was published in Community Trade Marks Bulletin No 23/2008 of 9 June 2008.
5 On 9 September 2008, the intervener, Debonair Trading Internacional Lda, 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 mark applied for in respect of the goods referred to in paragraph 3 above.
6 That opposition was based, inter alia, on the following earlier rights (‘the earlier marks’):
– Community registration No 485 078 for the word mark SO…?, filed on 7 March 1997 and registered on 26 February 2001 for goods in Class 3 corresponding to the following description: ‘Toilet preparations; preparations for the care of the skin, scalp and the body; suntanning preparations; preparations for reinforcing and strengthening nails; preparations for use in the shower and the bath; toilet soaps; preparations for toning the body; all being non-medicated; perfumes; fragrances; aftershaves, milks, oils, creams, gels, powders and lotions; shaving foams; cosmetics; eau de cologne; toilet waters; essential oils; shampoos; conditioners; hair lotions; preparations for the hair; hair styling products; anti-perspirants; deodorants for personal use; dentifrices’;
– United Kingdom trade mark registration No 2482729 for the word mark SO…?, filed on 18 March 2008 and registered on 1 August 2008 for goods in Class 25 corresponding to the following description: ‘Clothing, footwear, headgear, T-shirts, caps’.
7 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b), (4) and (5) of Regulation No 40/94 (now Article 8(1)(b), (4) and (5) of Regulation No 207/2009).
8 On 23 November 2010, the Opposition Division rejected the opposition in its entirety.
9 On 21 January 2011, the intervener filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10 By decision of 26 March 2013 (‘the contested decision’), the First Board of Appeal of OHIM annulled the decision of the Opposition Division and rejected the application for registration. In particular, it held, first, that although the earlier Community trade mark No 485 078 had been subject to proof of use pursuant to Article 42(2) of Regulation No 207/2009, the Opposition Division had not examined whether genuine use had been proven. In that regard, the Board of Appeal considered that, on the basis of the evidence produced by the intervener, it had been shown that the mark in question had been put to genuine use for ‘perfume, eau de toilette, fragrances, body lotion, body spray and lipsticks’, within the field of cosmetics. Next, the Board of Appeal found, on the one hand, that, with the exception of ‘bleaching preparations and other substances for laundry use’ in Class 3, the goods covered by the trade mark application were similar or identical to the goods covered by the earlier marks and, on the other, that the signs at issue were similar, because of the presence of the common element ‘so’, which was the dominant element of those signs. Consequently, and given the enhanced distinctiveness of the earlier marks and the fact that the intervener was the proprietor of a family of marks containing the element ‘so’, the Board of Appeal found that there was a likelihood of confusion between the signs at issue in relation to identical or similar goods. Finally, it held that, with regard to ‘bleaching preparations and other substances for laundry use’, in relation to which the opposition had not been upheld on the basis of Article 8(1)(b) of Regulation No 207/2009, there was a risk that the sale thereof would be detrimental to the reputation of the earlier marks within the meaning of Article 8(5) of Regulation No 207/2009.
Forms of order sought
11 The applicant claims that the Court should:
– declare the action admissible;
– annul the contested decision;
– order OHIM and the intervener to pay the costs.
12 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 In support of its action, the applicant relies on four pleas in law, alleging, in essence, an error of law in the choice of the legal basis of the contested decision and breach of the principles of legal certainty, protection of legitimate expectations and the right to a fair hearing, an error of law in the assessment of the genuine use of the earlier marks and an infringement of Article 8(1)(b) and (5) of Regulation No 207/2009.
The first plea, alleging an error of law in the choice of the legal basis of the contested decision and breach of the principles of legal certainty, protection of legitimate expectations and the right to a fair hearing
14 The applicant argues, first, that the legal basis of the contested decision depends on the date of filing of the trade mark application in question, namely 27 March 2008, and submits that the decision should therefore have been based on Regulation No 40/94, given that Regulation No 207/2009 had not yet entered into force on that date. Secondly, it claims that the contested decision should have been adopted on the basis of Article 42(1) of Regulation No 40/94, and not on the basis of Article 42(2) of Regulation No 207/2009.
15 In that regard, the applicant submits that, by opting for a different legal basis, the Board of Appeal infringed the principles of legal certainty and protection of legitimate expectations and the principle of the right to a fair hearing enshrined in Article 6 of the European Convention for the Protection of Human Rights and Fundamental Freedoms, signed in Rome on 4 November 1950, as interpreted by the European Court of Human Rights, (‘the ECHR’), inasmuch as the Board of Appeal did not allow the applicant to make effective submissions in support of its claims.
16 OHIM and the intervener dispute the arguments put forward by the applicant.
17 With respect, in the first place, to the complaint that the contested decision is based on Regulation No 207/2009, it should be pointed out that Regulation No 40/94, as amended, was repealed and replaced by Regulation No 207/2009, which entered into force on the 20th day following its publication in the Official Journal of the European Union, namely on 14 April 2009.
18 In those circumstances, it is sufficient to note that, notwithstanding the fact that the trade mark application in question was submitted on 27 March 2008 and that the opposition proceedings relating to that application were initiated under Regulation No 40/94, the Board of Appeal was not entitled to act on the basis of that regulation in the present case, since the contested decision was delivered after the date of entry into force of Regulation No 207/2009. Moreover, it is apparent from recital 1 in the preamble to Regulation No 207/2009 that that regulation codified Regulation No 40/94 and that the relevant provisions thereof did not undergo any amendment in the course of that codification (see, to that effect, judgment of 26 September 2013 in Case C‑609/11 P Centrotherm Systemtechnik v centrotherm Clean Solutions, not yet published in the ECR, paragraph 31).
19 It follows that the first complaint must be rejected as manifestly unfounded and, in any event, as ineffective.
20 With respect, in the second place, to the complaint that the contested decision is based on Article 42(2) of Regulation No 207/2009, it should be noted, first, that, on the date of publication of the trade mark application, namely on 9 June 2008, the earlier Community trade mark No 485 078 had been registered for more than five years, and, second, that a request for proof of use had been lodged before the Opposition Division by the applicant itself.
21 In those circumstances, proof of genuine use of that mark was a preliminary matter which had to be settled before a decision was given on the opposition proper (see, to that effect, Case T‑364/05 Saint-Gobain Pam v OHIM — Propamsa (PAM PLUVIAL) [2007] ECR II‑757, paragraphs 34 and 37 and the case-law cited).
22 It follows that, in the light also of the reasoning set out in paragraphs 17 and 18 above, the Board of Appeal did not err in adjudicating on that matter under Article 42(2) of Regulation No 207/2009 and that the second complaint must be rejected.
23 In the light of the foregoing, no breach of the principle of legal certainty can be imputed to the Board of Appeal.
24 As regards the alleged breach of the principle of protection of legitimate expectations, it must be rejected as manifestly unfounded, since no assurance was given to the applicant concerning the application of Article 42(1) of Regulation No 40/94 in the present case; furthermore, that regulation was no longer applicable (see paragraphs 17 and 18 above). Moreover, only assurances which comply with the applicable rules may give rise to legitimate expectations (see, to that effect, Case T‑347/03 Branco v Commission [2005] ECR II‑2555, paragraph 102, and Case T‑282/02 Cementbouw Handel & Industrie v Commission [2006] ECR II‑319, paragraph 77).
25 As regards, lastly, the alleged infringement of the right to a fair hearing, it must be pointed out that the Court has excluded the application of the right to a fair ‘hearing’ in proceedings before the Boards of Appeal of OHIM, since proceedings before the Boards of Appeal are administrative and not judicial in nature (see, to that effect, Case T‑273/02 Krüger v OHIM — Calpis (CALPICO) [2005] ECR II‑1271, paragraph 62 and the case-law cited). It follows that the applicant’s argument relating to infringement of its right to a fair hearing guaranteed by Article 6 of the ECHR must be rejected as manifestly unfounded (see judgment of 12 September 2012 in Case T‑295/11 Duscholux Ibérica v OHIM — Duschprodukter i Skandinavien (duschy), not published in the ECR, paragraph 21 and the case-law cited).
26 Moreover, even on the assumption that that complaint could be interpreted as alleging infringement of the rights of the defence and of the right to be heard, inasmuch as the Board of Appeal did not inform the applicant that it intended to adjudicate on the matter of genuine use on the basis of Article 42(2) of Regulation No 207/2009, it should be borne in mind that, although the right to be heard, as laid down by the second sentence of Article 75 of Regulation No 207/2009, covers all the factual and legal evidence which forms the basis for making the decision, it does not apply to the final position which the administration intends to adopt (see CALPICO, paragraph 65 and the case-law cited).
27 In those circumstances, the first plea must be rejected.
The second plea, alleging an error of law in the assessment of the genuine use of the earlier marks
28 There are three parts to this plea.
The first part
29 By the first part, the applicant submits that, contrary to the finding of the Board of Appeal, the Opposition Division did conduct an assessment of the evidence adduced by the intervener in order to establish that the earlier marks had been put to genuine use when considering the likelihood of confusion and that, in so doing, it correctly assessed whether that use was proven. The applicant submits that the Board of Appeal therefore erred in its interpretation of the ‘analytical method’ of genuine use.
30 OHIM and the intervener dispute the arguments put forward by the applicant.
31 As a preliminary point, it should be noted that, according to settled case‑law, it is clear from Article 42(2) and (3) of Regulation No 207/2009, read in the light of recital 10 in the preamble to that regulation and of Rule 22(3) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as amended, that the ratio legis of the provision requiring that the earlier mark must have been put to genuine use in order to be capable of being used in opposition to a Community trade mark application is to restrict the number of conflicts between two marks, where there is no good commercial justification resulting from a function actually performed by the mark on the market (see judgment of 28 March 2012 in Case T‑214/08 Rehbein v OHIM — Dias Martinho (OUTBURST), not yet published in the ECR, paragraph 21 and the case‑law cited).
32 As is apparent from recital 10 in the preamble to Regulation No 207/2009, the legislature considered there to be no justification for protecting an earlier trade mark except where the mark has actually been used. In keeping with that recital, Article 42(2) and (3) of Regulation No 207/2009 provides that an applicant for a Community trade mark may request proof that the earlier mark has been put to genuine use in the territory where it is protected during the five years preceding the date of publication of the trade mark application against which notice of opposition has been given (see judgment of 13 June 2012 in Case T‑312/11 Süd-Chemie v OHIM — Byk-Cera (CERATIX), not published in the ECR, paragraph 16 and the case‑law cited).
33 In the present case however, as OHIM contends, the Opposition Division did not examine the evidence submitted by the intervener in order to prove genuine use of the earlier marks on the basis of Article 42(2) of Regulation No 207/2009, but in the context of the global assessment as to whether there was a likelihood of confusion between the signs at issue; moreover, the applicant does not dispute this. In particular, the Opposition Division examined that evidence in response to the intervener’s arguments relating to the alleged enhanced distinctiveness acquired through the intensive use and reputation of the earlier marks.
34 It should be borne in mind that distinctiveness is one of the factors to be taken into account in order to assess whether there is a likelihood of confusion. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character, either per se or because of their recognition by the public, enjoy broader protection than do marks with less distinctive character (see, by analogy, Case C‑251/95 SABEL [1997] ECR I‑6191, paragraph 24; Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 18; and Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 20).
35 It follows from those considerations that the concept of use of a mark on the market, which makes it possible to establish that that mark is highly distinctive owing to the relevant public’s familiarity with it on that market, does not have the same scope as the concept of genuine use for the purposes of Article 42(2) of Regulation No 207/2009. The examination relating to whether the earlier mark is distinctive makes it possible, where that mark is found to be distinctive, to strengthen a finding that there is likelihood of confusion with the mark applied for and occurs at the same time as or after the comparison of the signs at issue. By contrast, the examination relating to whether there has been genuine use of the earlier mark takes place at an earlier stage, at the request of the applicant for a trade mark, and is decisive for the examination of the opposition, in so far as lack of genuine use results in the opposition being rejected without any examination of the grounds relied on in support of the opposition.
36 In accordance with the case-law cited in paragraph 21 above, because of the specific and preliminary nature of the question of genuine use of the earlier mark, that question does not fall within the context of the examination of the opposition proper, alleging the existence of a likelihood of confusion with that mark (Case T‑504/09 Völkl v OHIM — Marker Völkl (VÖLKL) [2011] ECR II‑8179, paragraph 36).
37 Accordingly, the Board of Appeal did not err in law in finding that the Opposition Division had not examined the question of genuine use of the earlier marks and on adjudicating itself on that question. The applicant’s arguments on that point must therefore be rejected.
The second and third parts
38 The applicant submits, in essence, that the documents submitted by the intervener in order to establish the reputation of the earlier marks do not prove genuine use of those marks for the goods concerned in the reference period and do not cover all the marks for which that genuine use should be established. In that regard, the applicant argues that the fact that the Board of Appeal limited its review to whether evidence of earlier Community trade mark No 485 078 had been adduced and that it refrained from responding to the applicant’s observations on other marks belonging to the family of marks of which the intervener is the proprietor, did not make it possible for the applicant clearly to identify the marks relied on in support of the opposition and to assess the relevance of the purported family of marks. The applicant argues that, consequently, the Board of Appeal breached its obligation to state reasons.
39 Moreover, the applicant submits that the Board of Appeal made a manifest error of assessment in finding that genuine use had been established during the relevant period, which was between 9 June 2003 and 9 June 2008, on the basis of invoices which did not cover all of that period. It further argues that the reasoning in the contested decision is irrelevant given that the invoices on which the Board of Appeal relied were issued by a company which had held an exclusive licence since 1999 and that the proof of use of the earlier Community trade mark was adduced only from 25 March 2004 onwards.
40 OHIM and the intervener dispute the arguments put forward by the applicant.
41 It should be noted as a preliminary point that, by the complaint alleging breach of the obligation to state reasons raised in the second part of this plea, the applicant seeks, in reality, to challenge the Board of Appeal’s assessment relating to the examination of the evidence submitted by the intervener in order to establish genuine use of the earlier marks. Consequently, it is appropriate to reclassify that part as seeking to establish an infringement of Article 42(2) of Regulation No 207/2009, inasmuch as the evidence in question does not demonstrate that the use of all the earlier marks was genuine in nature.
42 With respect, first, to the assessment of the evidence relating to earlier Community trade mark No 485 078, it should be borne in mind that there is genuine use of a trade mark where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark (see, by analogy, Case C‑40/01 Ansul [2003] ECR I‑2439, paragraph 43). Moreover, the condition relating to genuine use of the trade mark requires that the mark, as protected on the relevant territory, be used publicly and outwardly (Case T‑203/02 Sunrider v OHIM — Espadafor Caba (VITAFRUIT) [2004] ECR II‑2811, paragraph 39; see also, to that effect and by analogy, Ansul, paragraph 37).
43 When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether the commercial use of the mark is real, particularly the practices regarded as warranted in the relevant economic sector as a means of maintaining or creating market shares for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark (VITAFRUIT, paragraph 40; see also, by analogy, Ansul, paragraph 43).
44 Moreover, Rule 22(2) of Regulation No 2868/95, as amended, provides that the indications and evidence for the furnishing of proof of use of a trade mark are to consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
45 As to the extent of the use to which the earlier trade mark has been put, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (VITAFRUIT, paragraph 41, and Case T‑334/01 MFE Marienfelde v OHIM — Vétoquinol (HIPOVITON) [2004] ECR II‑2787, paragraph 35).
46 Lastly, it should be borne in mind that, as is apparent from the first subparagraph of Article 15(1) of Regulation No 207/2009, only trade marks genuine use of which has been suspended during an uninterrupted period of five years are subject to the sanctions provided for by the regulation. Accordingly, it is sufficient that a trade mark has been put to genuine use during a part of the relevant period for it not to be subject to the sanctions (VITAFRUIT, paragraph 45, and HIPOVITON, paragraph 40).
47 It must be stated that the applicant is mistaken in asserting that the fact that the intervener submitted some invoices is not sufficient to prove the reputation of the earlier trade marks, since ‘[a]nybody can sell any non‑repute product through[out] the European Union’. In the context of the examination of proof of genuine use for the purposes of Article 42 of Regulation No 207/2009, it is not a case of establishing the reputation of the earlier marks, which consists in demonstrating that those marks are known by a significant part of the public concerned by the products or services covered (see, to that effect, Case C‑375/97 General Motors [1999] ECR I‑5421, paragraph 31, and Case T‑67/04 Spa Monopole v OHIM — Spa-Finders Travel Arrangements (SPA-FINDERS) [2005] ECR II‑1825, paragraph 34), but of producing evidence relating to the place, time, extent and nature of use of the trade mark in connection with the goods covered, during a specified period.
48 In that regard, the Court observes that the applicant appears to confuse duration of use with the relevant period for the assessment of proof of genuine use.
49 Contrary to the applicant’s assertions, both the first invoice of the series produced by the intervener in order to demonstrate genuine use of the earlier marks, which was dated 25 March 2004, and the 38 other invoices issued from that date until 19 May 2008, fall within the relevant period, which extends from 9 June 2003 until 9 June 2008. The fact that the intervener did not submit any invoices concerning the first 10 months of that period is irrelevant, in accordance with the case-law cited in paragraph 46 above. For the same reasons, the applicant’s argument that the Board of Appeal did not correctly assess the relevant period in so far as it took account of evidence covering only the period from 2006 to 2008 cannot succeed.
50 A fortiori, the fact that the company which issued the invoices has been the exclusive holder of the intervener’s licence for the European Union since January 1999 is also irrelevant in view of the date from which the intervener was required to establish use of the earlier marks, since, pursuant to Article 42(2) of Regulation No 207/2009, the reference period begins to run from the date of publication of the Community trade mark application. Thus, the intervener was under no obligation to submit evidence predating 9 June 2003.
51 Second, it should be noted that the Board of Appeal concentrated its examination of the opposition, like the Opposition Division, on two earlier rights, namely Community trade mark No 485 078, for goods in Class 3, and United Kingdom trade mark registration No 2482729, for goods in Class 25, and this for reasons of procedural economy. Since, on the one hand, the Board of Appeal justified the restriction on the scope of its examination by the fact that the marks in question had the highest degree of similarity with the trade mark application and, on the other hand, they contained the broadest list of goods in their classes, in the event that the opposition had been upheld in respect of those marks, it would not have been necessary to examine it by reference to the other earlier rights. In the present case, the Board of Appeal took the view that genuine use had been established in respect of Community trade mark No 485 078 and upheld the opposition. In those circumstances, and in the light of the fact that United Kingdom trade mark registration No 2482729 had been registered for less than five years on the date of publication of the trade mark application, it was not necessary to adjudicate on the evidence submitted in relation to the other earlier marks.
52 Accordingly, the argument that it was allegedly impossible for the applicant to identify the trade marks in support of the opposition and to assess the relevance of the purported family of marks of which the intervener is the proprietor is ineffective, since it is sufficient that the opposition be justified on the basis of one earlier right for the registration of that application to be refused. Thus, only if the Court were to find, following the examination of this action, that the Board of Appeal erred in taking the view that the opposition was well founded with respect to the earlier marks would it be required to examine both the question of genuine use, to the extent that that is required by Article 42(2) of Regulation No 207/2009, and the existence of the grounds relied on in support of the opposition in the light of the other earlier rights.
53 Consequently, the second and third parts of the second plea must be rejected, as must the plea in its entirety.
The third plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
54 The applicant submits that the Board of Appeal made an error of assessment in finding that the signs at issue were similar on the ground that the element ‘so’ was the dominant element. According to the applicant, that laudatory element has a weak distinctive character, inasmuch as it is commonly used for cosmetics and textiles. The applicant argues, moreover, that the signs at issue are not similar, given the overall impression conveyed in visual, phonetic and conceptual terms. In addition, the applicant disputes the finding of the Board of Appeal with respect to the enhanced distinctiveness of the earlier marks and submits that the intervener has not proved the use of a family of marks containing the element ‘so’.
55 OHIM argues that the element ‘so’ has the same meaning in the contested mark and in the earlier marks and that the apostrophe, which is a simple punctuation mark, is not a decisive element. The fact that other marks in the register contain the element ‘so’ does not show that that element is descriptive with respect to cosmetics. In addition, both OHIM and the intervener submit that all the requirements for considering that the intervener is the proprietor of a family of marks are met.
56 According to Article 8(1)(b) of Regulation No 207/2009, 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 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.
57 Furthermore, under Article 8(2)(a)(i) and (ii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
58 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 that same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the 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 Case T‑162/01 Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
59 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T‑316/07 Commercy v OHIM — easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
60 It is in the light of those principles that the present plea should be considered.
61 In the first place, with respect to the relevant public, as the Board of Appeal found without being contradicted by the parties in that regard, in the light of the fact that the goods covered by the signs at issue are everyday products which target the public at large as well as retailers such as shops, drug stores and supermarkets, that public consisted of the average consumer, who was reasonably well informed and reasonably observant and circumspect. Moreover, as one of the earlier marks is a Community trade mark, the relevant territory is that of the European Union.
62 In the second place, with respect to the comparison of the goods covered by the marks at issue, the Board of Appeal found that, with the exception of ‘bleaching preparations and other substances for laundry use’, which fall within Class 3 and are cleaning agents, the goods covered by the mark applied for were identical or similar to the goods covered by the earlier marks. That assessment, which has not been challenged by the parties, must be upheld.
The comparison of the signs
63 The global assessment of the likelihood of confusion must, as far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements. The perception of marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).
64 It is settled case-law that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more of the visual, phonetic and conceptual aspects (see judgment of 12 July 2012 in Case T‑61/11 Vermop Salmon v OHIM — Leifheit (Clean Twist), not published in the ECR, paragraph 26 and the case-law cited).
65 It should also be observed that, in order to assess the degree of similarity between the marks at issue, it is necessary to determine the degree of visual, phonetic or conceptual similarity between them and, where appropriate, to assess the importance to be attached to those various factors, taking account of the category of goods or services in question and the circumstances in which they are marketed (see judgment of 25 June 2008 in Case T‑224/06 Otto v OHIM — L’Altra Moda (l’Altra Moda), not published in the ECR, paragraph 29 and the case‑law cited).
66 The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see OHIM v Shaker, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (OHIM v Shaker, paragraph 42, and judgment of 20 September 2007 in Case C‑193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public keep in their minds, so that all the other components are negligible in the overall impression created by that mark (Nestlé v OHIM, paragraph 43).
67 With regard to the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (Case T‑6/01 Matratzen Concord v OHIM — Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 35).
68 It should also be noted that where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is registered or the goods and services covered by the application for registration, those elements are recognised as having only a weak, or even very weak, distinctive character. Owing to their weak, or even very weak, distinctive character, descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on consumers and to be remembered by them (see judgment of 31 January 2013 in Case T‑54/12 K2 Sports Europe v OHIM — Karhu Sport Iberica (SPORT), not published in the ECR, paragraph 24 and the case-law cited).
69 The Board of Appeal found that the word element ‘so’, which is placed at the beginning of the signs at issue, dominated the overall impression created by those signs. In that regard, the Board observed, on the one hand, that the punctuation in those signs, which has a few immaterial differences, was generally not distinctive. On the other hand, it observed that the word elements ‘bio’ and ‘ētic’ and the graphic elements of the mark applied for were devoid of any distinctive character. Thus, it found that the fact that the element ‘so’ was fully reproduced by the mark applied for led to the conclusion that the signs at issue were visually highly similar and phonetically similar to a certain extent. By contrast, it found that the signs at issue were not conceptually similar.
– The visual comparison
70 It should be noted that the earlier word marks consist of the word ‘so’, followed by three dots and a question mark. The mark applied for, which is a figurative composite mark, consists of the word element ‘so’, followed by an apostrophe, and the word elements ‘bio’ and ‘ētic’. Those elements are superimposed and included in a rectangle with rounded corners, which is divided into two parts. The upper part of the rectangle, which occupies approximately three quarters of the total area of the sign, contains the element ‘so’, written in capital letters and in a grey typeface on a white background, to which the apostrophe is joined and below which is the element ‘bio’, which appears in black typeface on a white background. The first and last letters of the element ‘bio’ are capitals, whilst the middle letter ‘i’, written in lower case, has the same dimensions as the two other letters. The lower part of the rectangle is black and contains the element ‘ētic’, written in lower case and in a white typeface. Lastly, the elements ‘so’ and ‘bio’ are of equivalent size and much larger than the element ‘ētic’.
71 With respect to the earlier marks, which consist of a single word element followed by punctuation marks, it must be stated that they will be perceived as a whole by the relevant public. In that regard, it should be recalled that, in relatively short word signs, the elements at the beginning and end of the sign are as important as the central elements (see judgment of 16 September 2009 in Case T‑221/06 Hipp & Co v OHIM — Laboratorios Ordesa (Bebimil), not published in the ECR, paragraph 47 and the case-law cited). It follows that it cannot be inferred from the position occupied by the element ‘so’ in the earlier marks that it will attract consumers’ attention more.
72 Moreover, the Board of Appeal’s finding that the punctuation marks which appear in the last part of the earlier marks are ‘generally’ not distinctive is not well founded and is not at all apparent from the case‑law to which reference is made in the contested decision. It follows from that case‑law that distinctive character must be assessed, on the one hand, by reference to the goods or services for which registration has been sought and, on the other, by reference to the perception of the relevant public and that, consequently, as the figurative sign in question consists of an exclamation mark, it will not immediately be perceived as indicating the commercial origin of the goods or services in question by the consumer of those goods, but rather as mere laudatory advertising or as an eye‑catching gimmick, with the result that the sign is not able to fulfil the essential function of a trade mark (see, to that effect, judgment of 30 September 2009 in Case T‑75/08 JOOP! v OHIM (!), not published in the ECR, paragraphs 23 and 27).
73 Lastly, even though the element ‘so’ is not descriptive of the goods in Classes 3 and 25, it must be concluded that it has a laudatory function (see paragraph 87 below) and has only weak inherent distinctiveness in relation to those goods.
74 In the light of the foregoing and of the fact that the earlier marks are not composite marks, which may, in certain circumstances, allow for a comparison of the signs at issue on the sole basis of their dominant element (see, in that regard, the case-law cited in paragraphs 66 and 67 above), it must be concluded that the Board of Appeal was wrong to separate the element ‘so’ in order to find that it dominated the overall impression, prevailing over the punctuation marks.
75 As regards the mark applied for, it should be noted that, unlike the earlier marks, it contains three superimposed word elements and nine letters instead of two, so that it is much longer and has a different structure. Moreover, it contains figurative elements which are absent from the earlier marks. It should be recalled that, when a mark is composed of word elements and figurative elements, the word element of the mark is, as a rule, more distinctive than the figurative element, since the average consumer will more easily refer to the goods in question by citing the name rather than describing the figurative element (see Case T‑363/06 Honda Motor Europe v OHIM — Seat (MAGIC SEAT) [2008] ECR II‑2217, paragraph 30 and the case-law cited, and judgment of 17 January 2012 in Case T‑249/10 Kitzinger v OHIM — MDR and ZDF (KICO), not published in the ECR, paragraph 42). That is so in the present case. As the Board of Appeal found, the black and white frame with rounded corners, in which the word elements of the sign applied for are included, is commonplace and serves only to outline the word elements.
76 Similarly, despite the fact that the apostrophe in the sign applied for does not appear in the earlier marks, it is sufficient to note that, viewed as a whole, that element is negligible in the perception of the sign.
77 By contrast, with respect to the word elements of that sign, it should be stated that, contrary to the conclusion of the Board of Appeal, the element ‘so’ does not constitute the dominant element, since the element ‘bio’ which appears below the element ‘so’, in the centre of the rectangle, is written in a typeface of the same size. In that regard, it must be stated that, notwithstanding the fact that that element could be perceived as a reference to the composition or the origin of the goods covered, and despite the fact that their specification indicates that they are ‘derived from organic farming or made from products derived therefrom’, the fact remains that, in view of its size and position in the centre of the sign, as well as the fact that it is in black print, the element ‘bio’ is of at least equivalent importance to the element ‘so’.
78 Lastly, it must be stated that, even though the element ‘ētic’ of the mark applied for is smaller than the two other elements of the sign and appears in the lower part of that sign, it is not however negligible. It cannot be ruled out that it might be read in conjunction with the element ‘bio’ which precedes it and that it will therefore be recalled by consumers in the same way as the element ‘bio’. That conclusion is not undermined by the fact that the element in question may suggest the production methods of environmentally‑friendly cosmetics products.
79 It follows that the signs at issue have a different length and structure and that, apart from the word element ‘so’, which does not dominate the overall impression, they are not visually similar.
80 Accordingly, on the basis of a global assessment, the signs are not visually similar.
– The phonetic comparison
81 It should be noted that the earlier marks are composed of a single syllable, namely ‘so’, whereas the sign applied for has five syllables, namely ‘so’, ‘bi’, ‘o’, ‘e’ and ‘tic’, so that their length, rhythm and intonation are different.
82 However, as the Board of Appeal found, the common element ‘so’ of the signs at issue will be pronounced identically by the relevant public. The punctuation marks of the earlier marks, namely the dots and the question mark, are not capable of influencing the way in which that element is pronounced, and their impact will be limited solely to the intonation of that element.
83 It should also be pointed out that the word ‘so’ is placed at the beginning of the sign applied for and that the consumer is deemed generally to pay greater attention to the beginning of a mark than to its end, the initial part of a mark normally having a greater impact, both visually and aurally, than the final part (see judgment of 22 May 2012 in Case T‑179/11 Sport Eybl & Sports Experts v OHIM — Seven (SEVEN SUMMITS), not published in the ECR, paragraph 36 and the case-law cited).
84 Accordingly, it must be concluded that the signs at issue are phonetically similar to a low degree.
– The conceptual comparison
85 The Board of Appeal found that consumers would understand the earlier marks SO…? as an introduction to a question while the sign applied for SO’BiO ētic would be understood as a reference to a ‘bio-ethical product’, so that the signs at issue are not conceptually similar.
86 The applicant asserts that the common element of the signs at issue is used differently from a semantic point of view on account, first, of the presence of the punctuation marks in the earlier marks, which imply a question and, second, of the invented words accompanying it in the sign applied for and which have no meaning for the average European Union consumer. In that regard, the applicant claims that the element ‘bio’ has no meaning in English, but is derived from a contraction of the French word ‘biologique’, with which most European Union consumers are not familiar. With respect to the element ‘ētic’, the applicant submits that, although it has no meaning in English, it may suggest the word ‘ethic’ or ‘ethical’. Lastly, it submits that the horizontal line above the letter ‘e’ of the sign, which is neither a grave accent nor an acute accent, confers on the term in question an autonomous meaning.
87 It should be noted that, in its assessment relating to the distinctiveness of the earlier marks, the Board of Appeal observed that the English word ‘so’ may have various meanings, but that, without any further context, it created hesitation, a question or a certain suspense, whether or not it is followed by punctuation marks. It might therefore be understood by English‑ or German‑speaking consumers, out of context, as meaning ‘then’, ‘thus’ or ‘therefore’, whereas, accompanied by another word, it would have a laudatory function or would refer to the concept ‘so’, indicating importance or a degree.
88 Moreover, contrary to the applicant’s line of argument, the element ‘bio’ of the sign applied for might easily be perceived by the relevant public as a contraction of the word ‘biologique’, or ‘biological’ which means organic and refers to the origin or composition of the goods concerned. Lastly, the element ‘ētic’ might be associated with moral values or with fair trade goods. However, as a whole, the sign applied for has no specific meaning.
89 Moreover, since the elements ‘bio’ and ‘ētic’ are absent from the earlier marks, it must be concluded, as the Board of Appeal found, that the signs at issue are not conceptually similar.
90 It follows from the foregoing considerations that the signs at issue are not visually and conceptually similar and that they are phonetically similar to a very low degree. It must be stated that the phonetic similarity found is not sufficient to offset the significant differences found between the signs at issue.
91 In those circumstances, the Court finds that, contrary to the conclusion reached in the contested decision, the signs are not similar.
92 Since one of the cumulative conditions for the application of Article 8(1)(b) of Regulation No 207/2009 is not fulfilled, there is no need to undertake a global assessment of the likelihood of confusion (see paragraph 59 above) or to examine the applicant’s other arguments concerning that assessment, namely the alleged lack of evidence concerning the intensive use of the earlier marks and the existence of a family of marks containing the element ‘so’.
93 Consequently, the third plea must be upheld.
The fourth plea, alleging infringement of Article 8(5) of Regulation No 207/2009
94 First, the applicant submits that the Board of Appeal did not correctly assess the reputation of the earlier marks and that it failed to consider all the conditions for the application of Article 8(5) of Regulation No 207/2009. In the alternative, it submits that the relevant public will not establish a link between the signs at issue.
95 In this plea, the applicant argues, second, that, by taking into account a mark which was not the subject of the dispute, the Board of Appeal infringed its right to a fair hearing guaranteed by Article 6 of the ECHR. It should be noted that, at the hearing, the applicant acknowledged that the reference in the contested decision to the APPLE trade marks was an obvious clerical error which had in no way prejudiced its rights of defence and withdrew that complaint, formal note of which was taken in the minutes of the hearing.
96 It follows that the Court will limit its examination of this plea solely to the complaint alleging an error of assessment by the Board of Appeal concerning the conditions for applying Article 8(5) of Regulation No 207/2009.
97 With respect to that complaint, the intervener and OHIM argue that the Board of Appeal correctly assessed the reputation of the earlier marks and the risk of any damage thereto through the sale of cleaning products.
98 Article 8(5) of Regulation No 207/2009 provides that ‘[f]urthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where in the case of an earlier Community trade mark the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark’.
99 It is apparent from the wording of that provision that its application is subject to the following conditions: (i) the marks at issue must be identical or similar; (ii) the earlier mark cited in opposition must have a reputation; and (iii) there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Those conditions are cumulative and failure to satisfy one of them is sufficient to render that provision inapplicable (SPA-FINDERS, paragraph 30; Case T‑215/03 Sigla v OHIM — Elleni Holding (VIPS) [2007] ECR II‑711, paragraph 34; and Case T‑438/07 Spa Monopole v OHIM — De Francesco Import (SpagO) [2009] ECR II‑4115, paragraph 14).
100 It is in the light of those principles that the lawfulness of the contested decision must be examined.
101 The Board of Appeal concluded that the sale of household cleaning products is likely to affect the image of the earlier marks which enjoy a reputation for cosmetics in a substantial part of the European Union and risks damaging their reputation. In that regard, it considered that since those products are antagonistic, consumers of cosmetics, in particular of soaps, cleaning milks or perfumes, might be concerned when buying those products which are labelled under the same trade mark as bleaching or laundry goods, given that those goods pose a danger to health.
102 However, it should be borne in mind that, as is apparent from the examination carried out in the third plea, the signs at issue are not similar. Thus, the first requirement of that provision is not met, and the provision in question is not therefore applicable.
103 In those circumstances, without there being any need to examine the other complaints put forward by the applicant in order to call in question the Board of Appeal’s conclusion that the earlier marks have a reputation and that the use without due cause of the sign applied for would be detrimental to that reputation, the fourth plea should be upheld and the contested decision annulled.
Costs
104 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. In the present case, since OHIM and the intervener have been unsuccessful, they must each be ordered to bear their own costs and to pay the applicant’s costs, in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 26 March 2013 (Case R 203/2011-1);
2. Orders OHIM and Debonair Trading Internacional Lda each to bear their own costs, and to pay the costs of Groupe Léa Nature SA.
Papasavvas | Forwood | Bieliūnas |
Delivered in open court in Luxembourg on 23 September 2014.
[Signatures]
Table of contents
Background to the dispute
Forms of order sought
Law
The first plea, alleging an error of law in the choice of the legal basis of the contested decision and breach of the principles of legal certainty, protection of legitimate expectations and the right to a fair hearing
The second plea, alleging an error of law in the assessment of the genuine use of the earlier marks
The first part
The second and third parts
The third plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
The comparison of the signs
– The visual comparison
– The phonetic comparison
– The conceptual comparison
The fourth plea, alleging infringement of Article 8(5) of Regulation No 207/2009
Costs