JUDGMENT OF THE COURT OF FIRST INSTANCE (Fourth Chamber)
13 June 2007 (*)
(Community trade mark – Opposition proceedings – Application for the figurative Community trade mark FENNEL – Earlier Community word mark FENJAL – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b), Article 73, second sentence, and Article 74(1) of Regulation (EC) No 40/94)
In Case T‑167/05,
Grether AG, established in Binningen (Switzerland), represented initially by V. von Bomhard, A. Pohlmann and A. Renck, and subsequently by V. von Bomhard, A. Pohlmann and T. Dolde, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being
Crisgo (Thailand) Co. Ltd, established in Samutsakom (Thailand), represented by A. Bensoussan, M-E. Haas and L. Tellier-Loniewski, lawyers,
ACTION against the decision of the Fourth Board of Appeal of OHIM of 14 October 2004 (Case R 250/2002-4) concerning opposition proceedings between Grether AG and Crisgo (Thailand) Co. Ltd,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Fourth Chamber),
composed of H. Legal, President, V. Vadapalas and N. Wahl, Judges,
Registrar: J. Plingers, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 25 April 2005,
having regard to the response of OHIM lodged at the Court Registry on 9 August 2005,
having regard to the response of the intervener lodged at the Court Registry on 1 August 2005,
further to the hearing on 29 November 2006,
gives the following
Judgment
Background to the dispute
1 On 3 August 1998, the intervener submitted an application for registration of a Community trade mark at 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.
2 The trade mark for which registration was sought is the figurative sign reproduced below:
3 The goods in respect of which registration of the mark was sought come under Class 3 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 to the following description: ‘[c]ompact powder, lipstick, eye-shadow, eye-liner, blusher, nail polish and mascara’.
4 The application for registration was published in Community Trade Marks Bulletin No 37/1999 of 10 May 1999.
5 On 28 July 1999, the applicant filed a notice of opposition to the registration of the trade mark applied for in respect of all of the goods covered by that trade mark. It invoked the likelihood of confusion with its earlier Community word mark FENJAL, on the ground of the similarity between the signs in question in as much as the goods covered by the two trade marks are identical or similar and because the earlier trade mark enjoyed enhanced distinctiveness due to its reputation among the German public.
6 By decision of 28 February 2002, the Opposition Division rejected the opposition in its entirety.
7 On 28 May 2004, the applicant filed notice of appeal at OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94, against the decision of the Opposition Division.
8 That appeal was dismissed by decision of the Fourth Board of Appeal of 14 October 2004 (‘the contested decision’). The Board of Appeal confirmed the conclusions of the Opposition Division, taking the view that the goods in question were identical and that the slight similarities between the signs at issue were to a large extent offset by the differences between them. According to the Board of Appeal, the signs thus gave a different overall impression, in view in particular of the higher degree of consumer awareness with regard to the goods in question and of the fact that those goods are generally bought on sight. The Board of Appeal concluded that the visual and phonetic differences and any conceptual differences between the signs in question were sufficient to dispel the likelihood of confusion on the part of the public concerned, even in the case of identical goods and an earlier trade mark that was widely known or enjoyed a reputation in Germany.
Forms of order sought
9 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
10 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
11 In support of its action, the applicant invokes two pleas alleging breach of Article 74(1), in conjunction with the second sentence of Article 73 of Regulation No 40/94 and of Article 8(1)(b) of that regulation.
12 The Court considers that it is appropriate to examine the second plea first of all.
1. The second plea, alleging breach of Article 8(1)(b) of Regulation No 40/94
Arguments of the parties
13 The applicant submits that the mark applied for consists of the dominant word ‘fennel’ and a purely decorative logo above that word, separate from the word element, consisting of two letters, forming a whole that is impossible to identify clearly and playing a secondary role when a comparison is made between the marks at issue. The relevant public would perceive only the word ‘fennel’ and not the logo as being part of the trade mark applied for.
14 Thus, the comparison between the signs at issue should concentrate on the elements ‘fenjal’ and ‘fennel’, with the result that they are found to be similar visually and phonetically. Furthermore, according to the applicant, pages on the intervener’s website show its products marketed and distributed under the name ‘fennel’ alone, without the logo.
15 In the first place, the applicant submits that, visually, the signs are very similar. The words ‘fenjal’ and ‘fennel’ have the same number of letters. Four of the six letters which those words are composed of are identical and have the same position within those words. They share the same first syllable ‘fen’ and the same last letter ‘l’. The first part of trade marks is particularly important when signs are compared, given that the public tends to focus on the beginning of a trade mark when looking at the product. The applicant argues that neither the different letters in the middle of the signs at issue, to which consumers pay less attention, nor the logo have any effect on the similarities between the marks.
16 The applicant disputes the Board of Appeal’s reasoning that cosmetics are generally bought on sight with the effect that the visual comparison between the marks is of particular importance. The applicant states that, while it is true that cosmetic products are sometimes bought on sight, there cannot be said to be a general rule that this is the only relevant way to buy them, since they are often bought over the counter, for example in smaller shops or pharmacies, where the consumer orders the product orally. The consumer may also turn to a shop assistant for help and thus mention the product. According to the applicant, the consumer may also know the product only from hearsay, for example on the recommendation of friends. A purchase may also be made by order and on behalf of another person who has asked for a certain product to be brought back from the supermarket. In such situations, the visual impression becomes an entirely background issue and the likelihood of confusion could be the result only of the aural impression.
17 In the second place, the applicant submits that, phonetically, the words ‘fenjal’ and ‘fennel’ are pronounced similarly in most Community languages, the stress being placed on the first identical syllable of the signs at issue. Consequently, the only perceivable letter of the second syllable is the last identical letter ‘l’, since the public tends to swallow that part of the sign when pronouncing it, at least in the countries where the stress is placed on the first syllable of the word.
18 In English, the words ‘fenjal’ and ‘fennel’ are pronounced almost identically, with the stress on the first syllable. The second vowel ‘a’ of the word ‘fenjal’ is pronounced identically to the second vowel ‘e’ of the word ‘fennel’. The slight difference in pronunciation of the middle part of the words at issue is hardly noticeable. In addition, the phonetic comparison between the marks at issue in English-speaking countries would be of great importance if one assumed, as did the Board of Appeal in the contested decision, that the mark applied for has a meaning in English.
19 In German, the two signs are also pronounced similarly, the stress being on the first syllable. The second syllable is swallowed and the difference in pronunciation of the middle part of the two words is likely to be unnoticeable.
20 The applicant contests the decision of the Board of Appeal which considers that the mark applied for is likely to be pronounced as ‘Ef-El-Fe-nel’, which, in the applicant’s view, is an assumption devoid of any factual basis, far removed from everyday experience and contrary to common sense. The applicant considers that a consumer will not refer to a logo and word combination mark by attempting to pronounce both the logo and the word.
21 In the present case, either the logo is not pronounceable at all because it is not seen as containing two letters, or it could be pronounced as ‘FJ’. It is the applicant’s opinion that it is least likely that it would be pronounced ‘FL’. In any event, any normal consumer would always refer to the sign applied for by pronouncing only the word ‘fennel’.
22 Lastly, the applicant observes that, conceptually, the marks in question do not have any meaning whatsoever in most Member States. As regards the English-speaking countries, even if the relevant public were aware of the meaning of the word ‘fennel’ as being a plant or vegetable, that would only serve to reinforce the similarity between the words ‘fenjal’ and ‘fennel’. That is so because the concept conveyed by the word ‘fennel’ would simply emphasise the importance of that element within the mark applied for, so that considerably less importance attaches to the logo, which is also a constituent element of that mark. In that case, the conceptual dissimilarities between the signs in question would be outweighed by the visual and phonetic similarities between the words ‘fenjal’ and ‘fennel’.
23 The applicant states that the conceptual comparison between the signs at issue may produce three different results, all of which reinforce the conclusion that the marks in question are similar. The first is that consumers would not be in a position to carry out a conceptual comparison because neither mark has any meaning or because that meaning is unknown to consumers. The second is that the consumer might be vaguely aware of the meaning of ‘fennel’, in which case he would be inclined to attribute that same meaning to the earlier mark, given the close resemblance between the marks at issue. The third is that the consumer, who is familiar with the earlier mark, would mistake the mark applied for for the earlier mark, in which case confusion would occur before any conceptual comparison whatsoever was made.
24 The applicant concludes that the Board of Appeal was to a large extent mistaken in assuming that the alleged different meanings of the words concerned in English had any major influence on the potential confusion on the part of the public.
25 The applicant submits that, in that context, and bearing in mind that the goods covered by the two marks are identical, there is a likelihood of confusion because a consumer of products used on a daily basis such as cosmetics is not very attentive when making purchases and is more likely to rely on the imperfect recollection that he has retained of the trade mark following his last purchase. Even if the public were to perceive two letters inside the rectangle of the logo of the mark applied for, those letters would only enhance the likelihood of confusion between the marks at issue inasmuch as those letters would remind the public of the earlier mark.
26 The applicant points out that, according to Community case-law, the likelihood of confusion must be assessed overall, taking into consideration all the relevant factors. In the present case, the goods in question are cosmetics, products used on a daily basis such as lipstick, nail polish or eye-shadow, which are not necessarily products of a high added value, and can be bought everywhere, including at supermarkets or at petrol stations. Contrary to the assessment in the contested decision, the level of attention of consumers of cosmetics is low.
27 In the applicant’s opinion, the likelihood of confusion must be determined by means of a global appraisal of the visual, phonetic and conceptual similarity of the marks, on the basis of the impression given by them, bearing in mind their distinctive and dominant components. The earlier mark FENJAL enjoys an enhanced strength and distinctiveness, both inherently and because of its extensive use and the promotion it has received.
28 The applicant takes the view that the mark FENJAL is a fantasy term, without any meaning in the Community languages, which consumers will consequently not associate with the products concerned. However, the mark FENJAL enjoys an enhanced distinctiveness due to its long-standing and intensive use, as well as its reputation in Germany. Re-launched in 1996, the earlier mark built on the reputation of its predecessor FENJALA, sales of which reached more than EUR 35 million in 1980. The applicant is currently the third most important producer of bath oils in that Member State.
29 Furthermore, the applicant considers that, according to the case-law, the global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular the similarity between the marks and between the goods or services covered. Accordingly, a slight similarity between goods or services may be offset by a greater degree of similarity between the marks, and vice versa.
30 In the present case, according to the applicant, since the goods covered by the marks are identical, the signs are similar visually and phonetically, and the distinctiveness of the earlier mark is enhanced, there is a likelihood of confusion between the marks at issue.
31 The applicant adds that the likelihood of confusion could even take the form of a likelihood of association, in particular in the unlikely event that the public recognised the two-letter combination forming the logo of the mark applied for, because it may associate that logo with the earlier mark fenjal, given that the letter ‘j’ appears in the logo. The letter ‘j’ in the middle of the word ‘fenjal’ stands out because its lower end underlines the preceding letter ‘n’ of the mark. In addition, according to the applicant, there is a crown above the letter ‘j’ depicted in a different colour from that of the word ‘fenjal’. Lastly, the letter ‘j’ of the word ‘fenjal’ is the only letter which looks as if it is written in upper case. Consequently, the letter ‘j’ plays an important role in the overall impression given by the mark as it is actually used.
32 In the first place, OHIM observes that the identity of the goods in question is not contested.
33 In the second place, concerning the similarity of the signs at issue, OHIM refers to Community case-law to the effect that the assessment of the visual, phonetic and conceptual similarity of the trade marks at issue must be based on the overall impression given by those marks, taking account of their distinctive and dominant components. OHIM also observes that that assessment must take into account the perception of the earlier mark by the public in the territory of the European Union, as FENJAL is a Community trade mark.
34 OHIM rejects the applicant’s reasoning to the effect that the signs in question are similar. The earlier sign FENJAL is a word mark composed of a six-letter word, which does not have any meaning in any of the languages of the European Union when applied to Class 3 goods. According to OHIM, the sign FENNEL is also a six-letter word, written in a not particularly fanciful type font. That word element is crowned by a figurative device consisting of the letters ‘fl’ in a rectangular frame, within which the letter ‘l’ is back to front.
35 OHIM concurs with the Board of Appeal’s view that the signs are visually dissimilar. In its view, the slight visual similarities resulting from the common sequence ‘fen’ followed by ‘l’ are offset by the difference in the configuration of the signs overall. The doubling of the letter ‘n’ in the middle of the word (‘nn’) is particularly eye-catching in the Community trade mark applied for and the visual impact of the sign endings, ‘jal’ and ‘nel’, is notably different. OHIM considers that the disparities in the construction of the signs are moreover reinforced by the presence of the figurative device which, although admittedly of secondary importance, is not purely ornamental and thus must not be disregarded.
36 OHIM concurs with the Board of Appeal’s conclusion that the two signs are phonetically dissimilar.
37 OHIM considers that the applicant’s primary claim is that there is a likelihood of confusion in Germany. In that territory, OHIM submits, the earlier mark will be pronounced ‘fen‑ial’, with the emphasis on the second vowel, whereas the Community trade mark applied for will be pronounced ‘fe-nel’, with the emphasis on the first vowel. According to OHIM, in Germany as well as in any other Member State, it follows that the signs are phonetically dissimilar.
38 Conceptually, OHIM concurs with the Board of Appeal’s position that the signs do not convey a specific meaning except in English, in which the signs would be perceived as having different semantic content, the word ‘fennel’ possibly alluding to an aromatic plant, known as a stomach and intestinal remedy. Those signs cannot therefore be distinguished conceptually by that part of the relevant public that does not speak English.
39 In the third place, as regards the likelihood of confusion, OHIM disputes the applicant’s argument that the consumer’s degree of attention when buying cosmetics is low. OHIM submits that cosmetics are not a homogeneous category of goods, as they include a wide variety of different products such as beauty products as well as toiletries. More care is exercised when purchasing beauty products than when purchasing toiletries, in view of their expense and the positive effects that these goods are expected to have on the looks of the consumer and because they are considered an indulgence rather than a necessity. The degree of attention is therefore likely to be enhanced.
40 OHIM notes that, in spite of the identical nature of the goods covered by the two signs at issue and their common sequence of the letters ‘fen’ and ‘l’, the Board of Appeal was able, as a matter of law, to hold that the relevant public in the Community, which is circumspect and shows a relatively high degree of care, was not likely to believe that the goods in question came from the same undertaking or from economically-linked undertakings, having regard to the visual and phonetic differences between the two signs.
41 According to OHIM, the visual differences between those signs are all the more important given that cosmetics are primarily bought on sight inasmuch as they are generally displayed on shelves in such a way that consumers are able to examine those goods visually when purchasing them. As a result, even if the applicant’s argument that the signs are to a certain extent phonetically similar were correct, that degree of phonetic similarity would not be decisive and would be offset by the visual differences.
42 OHIM submits that, as the two opposing marks have been found to be dissimilar overall, any enhanced distinctiveness the earlier mark may have, as claimed by the applicant, cannot alter the overall assessment of the likelihood of confusion.
43 With regard to the applicant’s argument that the goods are advertised on the internet only under the name ‘fennel’, without the logo, OHIM observes that the annexes to the application, which seek to substantiate such an assertion, were never submitted to the Board of Appeal and must therefore be disregarded.
44 OHIM argues, in addition, that in opposition proceedings the likelihood of confusion is evaluated solely upon the basis of a comparison between the Community trade mark application, as filed, and the earlier mark, as registered. No account is taken of how the earlier mark is actually used on the market provided that it is not subject to any proof of use obligation. Likewise, the current or future use of the Community trade mark applied for does not have any impact on the assessment of the likelihood of confusion.
45 The intervener, in the first place in respect of the comparison of the signs at issue, shares the view of the Board of Appeal that those signs are visually, phonetically and conceptually different.
46 The intervener considers that, as the goods concerned are cosmetics bought on sight, the signs in question are first perceived visually. They are only perceived aurally by the consumer if examined more closely. The greatest importance should therefore be attached to the visual similarity.
47 The intervener submits that, visually, the comparison must be made between the word mark FENJAL and the complex figurative mark FENNEL, which includes both a word element and a figurative element, namely a monogram composed of the letter ‘f’ and an inverted ‘l’ inside a frame. The two signs are visually different owing to the existence of the series of letters ‘nja’ in the earlier trade mark and ‘nne’ in the mark applied for, and to the fact that the two letters ‘nn’ are written in bold characters. The monogram is an additional and distinctive figurative element forming a substantial part of the trade mark applied for and its presence is not of secondary importance.
48 The intervener adds that, phonetically, the mark FENNEL is characterised by an impression of an echo. If it is considered that consumers will pronounce only the word part of the mark, the pronunciation will be ‘fen-nel’, marked by an alternation of the sounds ‘en’ and ‘ne’, and that impression is further enhanced if they pronounce the whole of the trade mark applied for – i.e. ef-el-fe-nel. In both cases, the predominant sound is ‘e’. On the other hand, the earlier mark is pronounced very differently: in the mark FENJAL the pronunciation of the letter ‘e’ is barely audible, the dominant vowel being the hard vowel ‘a’, which is far more resonant.
49 Conceptually, and concerning the possible association of ‘fennel’ with an aromatic plant in the English language, the intervener submits that either consumers cannot understand English and it is therefore not possible to assess the conceptual resemblances between the two words which, in that case, have no meaning, or consumers are English speakers but think that ‘fennel’ is a word devoid of any semantic content, since it is not part of the basic vocabulary of the English language, or understand that ‘fennel’ is an aromatic plant but has no meaning in relation to cosmetics and the mark is thus distinctive per se. Accordingly, whatever the case may be, there is no conceptual resemblance between the two signs.
50 As regards the assessment of the likelihood of confusion, the intervener takes issue with the applicant’s argument that the consumer’s level of attention is low. Thus, the intervener submits that the level of attention is higher than average and indeed likely to vary according to the product in question.
51 The intervener points out that the Community trade mark application does not cover all the goods in Class 3 but is limited to compact powder, lipstick, eye-shadow, eye-liner, blusher, nail polish and mascara. In the mind of the relevant public, consisting of females concerned about improving their appearance, that type of goods is similar to luxury goods.
52 Such products are bought in perfumeries and beauty salons, where consumers are advised by staff and have the opportunity to try goods before buying them. They are not bought hastily. It is possible to buy cosmetics in supermarkets with the assistance of a salesperson but this is an exception rather than the norm.
53 Finally, the intervener submits that the difference between the Board of Appeal’s and the applicant’s respective views relating to the level of attention is of no consequence with regard to the absence of similarity between the signs at issue or the absence of a likelihood of confusion. In view of the overall differences between the two signs, the relevant consumer will not attribute the same commercial origin to the goods covered by the opposing marks.
Findings of the Court
54 Under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
55 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (Case T-6/01 Matratzen Concord v OHIM– Hukla Germany (MATRATZEN)[2002] ECR II-4335, paragraph 23, and Case T-129/01 Alejandro v OHIM – Anheuser-Busch (BUDMEN) [2003] ECR II-2251, paragraph 37).
56 The likelihood of confusion must be assessed globally, according to the perception by the relevant public of the signs and the goods or services in question, and taking into account all factors relevant to the circumstances of the case (Case T‑185/02 Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO) [2004] ECR II-1739, paragraph 50).
57 That global assessment must take account in particular of the recognition enjoyed by the trade mark on the market and of the degree of similarity between the conflicting signs and between the goods or services identified. It implies some interdependence between the factors taken into consideration, so that a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (see, by analogy, Case C‑39/97 Canon [1998] ECR I-5507, paragraph 17, and Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 19).
58 In the present case, the relevant public is composed of average consumers of the European Union among whom the earlier sign enjoys protection.
59 The perception of marks in the mind of the average consumer of the goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (Case C-251/95 SABEL [1997] ECR I-6191, paragraph 23, and Lloyd Schuhfabrik Meyer, paragraph 25). For the purposes of that global assessment, the average consumer of the products concerned is deemed to be 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 (Lloyd Schuhfabrik Meyer, paragraph 26).
60 It is not disputed by the parties that the goods covered by the signs at issue are identical. The only issue between the parties is whether the Board of Appeal was entitled to consider that the signs in question were sufficiently dissimilar to rule out a likelihood of confusion.
– Similarity of the signs
61 As is apparent from established case-law, the global assessment of the likelihood of confusion, as regards the visual, aural or conceptual similarity of the conflicting signs, must be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant components (see Case T-292/01 Phillips Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-4335, paragraph 47 and the case-law cited).
62 In the present case, the earlier sign consists exclusively of the word element ‘fenjal’, whereas the trade mark applied for is composed of the word element ‘fennel’ and a separate logo depicted above that word, consisting of two letters within a rectangular frame, namely the letter ‘f’ and another letter which can be perceived either as a stylised ‘j’ or as a capital ‘l’, the lower part of which is turned towards the left.
63 For the purposes of the comparison of the signs at issue, the applicant has made a number of submissions arguing that a comparison should be made only between the word elements ‘fenjal’ and ‘fennel’, the logo having a purely decorative purpose.
64 In support of that assertion, the applicant has annexed to its application internet pages intended to demonstrate that FENNEL cosmetics are marketed under the word element ‘fennel’ alone, without the logo. OHIM submits that that evidence was never adduced before the Board of Appeal and cannot be taken into consideration.
65 It is apparent from the case-file and was confirmed at the hearing that that evidence was produced for the first time before the Court of First Instance and that it was never adduced in the administrative proceedings before OHIM. It follows that that evidence is inadmissible and cannot be taken into consideration. Indeed, the admission of that evidence would be contrary to Article 74 of Regulation No 40/94.
– Visual similarity
66 While the visual comparison of the conflicting signs admittedly reveals that their first three letters and their final letter are the same, the Board of Appeal rightly found that each of the signs at issue produces a different visual impression. The slight visual similarities due to the sequence of letters ‘fen’ and ‘l’ are offset by the difference in the configuration of the signs as a whole.
67 It should be noted, first of all, that the letters ‘nn’ in the middle of the mark FENNEL are in different graphics from the other letters, which attracts the consumer’s attention. Next, whereas the overall visual impression of the earlier sign is determined exclusively by the single word element ‘fenjal’, that created by the trade mark applied for is a result of the combination of two elements, that is, the word element and the figurative element of which it is composed.
68 Even if it were accepted, as the applicant claims, that the figurative element is purely decorative in relation to the word element of the trade mark applied for, the figurative element is much more appropriate than the word element for the purpose of distinguishing the goods covered and capturing the consumer’s attention, and the word element ‘fenjal’ alone in the earlier mark is, in any event, sufficiently distinct from the sign applied for that, visually, the differences prevail over the similarities in the perception of the consumer. That conclusion is not altered by the fact, relied on by the applicant, that the public’s attention will focus more on the first three letters and the last letter of the signs than on the letters ‘ja’ and ‘ne’.
– Aural similarity
69 The pronunciation of the word ‘fennel’ is characterised by the predominance of the sound ‘e’, whereas in the word ‘fenjal’ the dominant sound is the vowel ‘a’. The Board of Appeal therefore correctly found that the signs at issue have clearly differentiated phonetic sequences.
70 It should also be noted that it cannot be accepted, as the applicant claims, that there is some likelihood of confusion in Germany, since the word ‘fenjal’ will be pronounced in that Member State with the emphasis on the second vowel, whereas the word ‘fennel’ will be pronounced with the emphasis on the first vowel.
– Conceptual similarity
71 It is accepted by the parties that neither of the words in question has any meaning in the majority of the Member States. While there may be doubts with regard to the relevant English-speaking public, for whom the word ‘fennel’ may, possibly, refer to a plant or a vegetable, that fact does not cast doubt on the lack of similarity between the signs at issue.
72 In the light of the above, the Board of Appeal correctly found that the differences between the signs at issue are predominant visually, aurally and conceptually for all the consumers concerned. Indeed, the comparison of the signs at issue demonstrates that the signs create different overall impressions. The fact that only the first three letters and the last letter of those signs are the same does not alter the finding that, in the overall impression given, the differences between the signs prevail over the few similarities.
– Global assessment of the likelihood of confusion
73 When carrying out a global assessment as to whether there is a likelihood of confusion, account must be taken of the fact that the likelihood of confusion must be assessed in relation to a reasonably well-informed and reasonably observant and circumspect Community consumer, that the goods covered by the marks in question are identical and that the conflicting signs are not similar.
74 Having regard to the differences between the signs at issue, the Board of Appeal must be regarded as correct in finding that there was no likelihood of confusion between them, in spite of the identical nature of the goods concerned. Indeed, where a global assessment is to be made of the likelihood of confusion, the fact that the signs in question are not similar cannot be offset by the fact that the goods designated are identical or that those goods belong to the same manufacturing and marketing sector, since the identical nature of the goods is not sufficient for the existence of a likelihood of confusion to be acknowledged (see, to that effect, judgment of 12 October 2004 in Case T-35/03 Aventis CropScience v OHIM – BASF (CARPO), not published in the ECR, paragraph 29, and Case T-423/04 Bunker and BKR v OHIM – Marine Stock (B.K.R.) [2005] ECR II-4035, paragraph 76).
75 The Board of Appeal’s conclusion is not affected by the fact that, according to the applicant, the earlier mark is highly distinctive, especially in Germany.
76 It is true that, according to the case-law, the distinctive character of the earlier trade mark must be taken into consideration when determining whether the similarity between the goods or services covered by the two trade marks is sufficient to give rise to a likelihood of confusion (Canon, paragraphs 18 and 24). That interpretation is supported by the seventh recital in the preamble to Regulation No 40/94, according to which the likelihood of confusion must be appreciated in the light, inter alia, of the recognition of the trade mark on the market.
77 In the present case, it is clear from the documents before the Court that the Board of Appeal did not rule on whether or not the earlier mark is distinctive. However, it must be noted that whether or not the sign FENJAL is well known in Germany would not call into question the Board of Appeal’s conclusion.
78 Whilst it is settled case-law that, the more distinctive the earlier mark, the greater will be the likelihood of confusion (SABEL, paragraph 24, and Case T-85/02 Díaz v OHIM – Granjas Castelló (CASTILLO) [2003] ECR II-4835, paragraph 44), it should be noted that a likelihood of confusion presupposes that the signs are identical or similar. Thus, the fact that a trade mark is well known is a factor which, far from giving rise of itself to a likelihood of confusion, must be taken into account when determining whether the similarity between the signs or between the goods and services is sufficient to give rise to a likelihood of confusion (see, to that effect, Canon, paragraph 19, and Case T‑110/01 Vedial v OHIM – France Distribution (HUBERT) [2002] ECR II-5275, paragraph 65).
79 In the light of the above, it must be held that the Board of Appeal correctly found that there was no likelihood of confusion between the signs at issue.
80 It follows from the above that the plea alleging infringement of Article 8(1)(b) of Regulation No 40/94 must be rejected as unfounded.
2. The first plea, alleging breach of Article 74(1) and the second sentence of Article 73 of Regulation No 40/94
Arguments of the parties
81 The applicant submits that the contested decision infringes Article 74(1) and the second sentence of Article 73 of Regulation No 40/94 in that the Board of Appeal based its decision on new facts and arguments which were never put forward or discussed by the parties, upon which the applicant has not had the opportunity to express its views, and which are relevant to the basis on which the contested decision was made.
82 In the first place, the applicant claims that the Board of Appeal wrongly held that the level of attentiveness of consumers of cosmetics was higher than average and that cosmetics were normally bought on sight.
83 In the second place, the Board of Appeal considered that the signs in question were conceptually different in the English-speaking countries. However, it was only before the Board of Appeal that the intervener suggested that in English the word element ‘fennel’ meant a vegetable.
84 In the third place, according to the applicant, the Board of Appeal disregarded the evidence which it had submitted before the Opposition Division demonstrating the intensive use and the reputation of the earlier mark FENJAL in Germany, and thus failed to take account of its distinctiveness.
85 OHIM rejects the applicant’s arguments to the effect that the Board of Appeal infringed Article 74(1) and the second sentence of Article 73 of Regulation No 40/94.
86 In the first place, OHIM submits that it has a duty to examine of its own motion all relevant matters of law in the case, as set out in Article 8(1)(b) of Regulation No 40/94, for the purposes of determining whether or not a likelihood of confusion is likely to arise, when assessing whether an opposition is to be upheld.
87 As regards the conceptual similarity of the signs, OHIM cites the case-law of the Court of Justice to the effect that the global assessment of the visual, phonetic and conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind their distinctive and dominant components.
88 Consequently, in the absence of any factual evidence or argument on the file concerning the meaning of the signs at issue, the Board of Appeal was bound to check of its own motion whether the signs could be intellectually linked in the public’s mind on account of their possible meaning in any of the official languages of the European Union.
89 Moreover, OHIM points out that the meaning of signs may be examined by referring to dictionaries, that is to say, generally accessible sources. In drawing conclusions from a dictionary definition which was not adduced by the parties, the Board of Appeal did not therefore infringe Article 74(1) of Regulation No 40/94.
90 As regards the level of attention of the consumer, OHIM takes the view that this varies according to the category of goods or services in question. In the absence of any factual evidence or argument in that regard on the file, the Board of Appeal was nevertheless bound to evaluate of its own motion the level of attention of the average consumer.
91 As regards whether the goods in question are primarily bought on sight or ordered orally, OHIM takes the view that the Board of Appeal was bound to take into consideration and to evaluate the ways in which the goods concerned are marketed, even in the absence of any facts or evidence put forward before it by the parties.
92 In the second place, OHIM contests the applicant’s argument that it should have been heard in order to be able to comment on the references made by the Board of Appeal to the meaning of the word ‘fennel’, the level of attentiveness of consumers and the methods of selling cosmetics, and submits that findings on such matters of law, which are evaluated without prior notice under Article 73 of Regulation No 40/94, need not be submitted to the parties before a decision is taken. Moreover, that article does not impose any obligation to inform the parties of how the decision-making body concerned intends to apply Regulation No 40/94.
93 Furthermore, OHIM submits that both in the proceedings before the Opposition Division and in those before the Board of Appeal, the applicant had the opportunity to present its views and arguments on the various elements necessary for an assessment of the likelihood of confusion.
94 OHIM also submits that the Board of Appeal established that the conflicting signs, whilst presenting slight visual similarities resulting from the common presence of the sequence of letters ‘fen’ and ‘l’, were clearly dissimilar overall, so that it was not necessary to examine the earlier mark’s degree of distinctiveness acquired through use.
95 OHIM submits that Article 74(1) of Regulation No 40/94 does not impose on it any obligation to take into consideration irrelevant items of evidence.
96 Consequently, according to OHIM, since one of the conditions necessary for Article 8(1)(b) of Regulation No 40/94 to apply was lacking – namely, in the present case, the similarity of the signs – the Board of Appeal was entitled to disregard documentary evidence which does not relate to similarity between the signs but merely broadens the scope of protection enjoyed by the earlier mark.
97 The intervener submits that the applicant’s arguments concerning the breach of Article 74(1) and the second sentence of Article 73 of Regulation No 40/94 are unfounded, since, in assessing whether there was a likelihood of confusion between the two marks at issue, the Board of Appeal merely specified and applied the relevant criterion for assessing whether there is a likelihood of confusion between two marks, namely the presumed perception by the relevant consumers, as defined by the applicant’s evidence.
98 The evidence presented by the applicant shows that the relevant consumer is a woman concerned about, and seeking to improve, her appearance, that she buys her cosmetics on sight and that she wants to have the opportunity to look at them and then to try them before buying them.
99 Thus, according to the intervener, Article 73 of Regulation No 40/94 covers all the facts, assertions and evidence forming the basis of the decision. However, it does not apply to the final position adopted. The Board of Appeal was not under any obligation to ask for the applicant’s comments on the assessment of the facts and evidence put forward.
100 The intervener submits further that the Board of Appeal based its decision on a visual and aural comparison and not on the conceptual comparison between the two signs in question in the English-speaking countries. The Board of Appeal considered such a comparison to be merely speculative, stating at paragraph 20 of the contested decision that, if any conceptual comparison were possible, the signs would be conceptually dissimilar.
101 According to settled case-law, an assessment as to whether there is any similarity between conflicting marks must be made on the visual, aural and conceptual levels. Consequently, the applicant, knowing that such a conceptual comparison would be made, had the opportunity to comment on that point but chose not to do so and cannot, as a result, lay the blame for its own omission on OHIM.
Findings of the Court
102 While the right to be heard, as laid down in the second sentence of Article 73 of Regulation No 40/94, covers all matters of law or of fact and the items of evidence which form the basis of the decision-making act, it does not, however, apply to the final position which the administration intends to adopt (Case T-16/02 Audi v OHIM (TDI) [2003] ECR II-5167, paragraphs 71 and 75; see also, to that effect and by analogy, Joined Cases T-129/95, T-2/96 and T‑97/96 Neue Maxhütte Stahlwerke and Lech-Stahlwerke v Commission [1999] ECR II-17, paragraph 231).
103 Moreover, it is apparent from Article 74(1) of Regulation No 40/94 that, in proceedings relating to relative grounds for refusal of registration, such as those in the present case, the examination of the facts carried out by OHIM of its own motion is to be restricted to the facts, evidence and arguments provided by the parties and the relief sought.
104 The criteria for applying a relative ground for refusal of registration, as with any other provision relied on in support of the claims made by the parties, are naturally part of the matters of law submitted for examination by OHIM. It should be borne in mind in this regard that a matter of law may have to be ruled on by OHIM even when it has not been raised by the parties if it is necessary to resolve that matter in order to ensure a correct application of Regulation No 40/94 in the light of the facts, evidence and arguments provided by the parties and the relief sought. Thus, the matters of law put forward before the Board of Appeal also include any question of law which must necessarily be examined for the purpose of assessing the facts, evidence and arguments provided by the parties and for the purpose of allowing or dismissing the claims, even if the parties have not put forward a view on those matters and even if OHIM has omitted to rule on that aspect (Case T-57/03 Spag v OHIM – Dann and Backer (HOOLIGAN) [2005] ECR II-287, paragraph 21).
105 In the present case, the applicant cannot criticise the Board of Appeal for having taken into consideration in the contested decision the presumed perception of the relevant public – in particular with regard to the consumer’s degree of attention, the manner in which the goods are bought or the meaning of the signs in question – as it appears from the facts and evidence put forward before it by the applicant.
106 Moreover, the Board of Appeal also based its analysis, essentially, on facts derived from generally acquired practical experience of the marketing of cosmetics, namely compact powder, lipstick, eye-shadow, eye-liner, blusher, nail polish and mascara, since those facts are likely to be known by consumers of those products.
107 It follows that the Board of Appeal did not, contrary to what the applicant maintains, base its decision on new facts and arguments. Moreover, the appraisal of the evidence conducted by that Board of Appeal could, in any event, be challenged before the Court of First Instance (Case C-214/05 P Rossi v OHIM [2006] ECR I-7057, paragraph 53).
108 With regard to the claims relating to the failure to take into consideration the evidence demonstrating the distinctiveness of the earlier mark in Germany, it must be noted that a procedural irregularity will entail the annulment of a decision in whole or in part only if it is shown that, had it not been for the irregularity, the contested decision might have been substantively different (see Case T-315/03 Wilfer v OHIM (ROCKBASS) [2005] ECR II-1981, paragraph 33 and the case-law cited).
109 In the present case, it was held at paragraphs 73 to 80 above that the difference between the signs at issue made it impossible to find a likelihood of confusion, however well known the earlier sign may be. It must therefore be held that recognition of the fact that the earlier sign was well known in Germany could not have altered the operative part of the contested decision.
110 It follows from all of the foregoing considerations that the plea alleging infringement of Article 74(1) and the second sentence of Article 73 of Regulation No 40/94 must be rejected.
111 The action must therefore be dismissed in its entirety.
Costs
112 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener.
On those grounds,
THE COURT OF FIRST INSTANCE (Fourth Chamber)
hereby:
1. Dismisses the action;
2. Orders the applicant to pay the costs.
Delivered in open court in Luxembourg on 13 June 2007.