JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
7 May 2015 (*)
(Community trade mark — Opposition proceedings — Application for Community figurative mark GELENKGOLD — Earlier Community figurative mark representing a tiger — Relative ground for refusal — Likelihood of confusion — Alteration of the distinctive character of the earlier mark — Phonetic similarity of the signs — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑599/13,
Cosmowell GmbH, established in Sankt Johann in Tirol (Austria), represented by J. Sachs, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Walicka, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Haw Par Corp. Ltd, established in Singapore (Singapore), represented by C. Schultze, J. Ossing, R.-D. Härer, C. Weber, H. Ranzinger, C. Brockmann and C. Gehweiler, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 5 September 2013 (Case R 2013/2012-4), concerning opposition proceedings between Haw Par Corp. Ltd and Cosmowell GmbH,
THE GENERAL COURT (Ninth Chamber),
composed of G. Berardis (Rapporteur), President, O. Czúcz and A. Popescu, Judges,
Registrar: J. Weychert, Administrator,
having regard to the application lodged at the Registry of the General Court on 11 November 2013,
having regard to the response of OHIM lodged at the Registry of the General Court on 27 February 2014,
having regard to the response of the intervener lodged at the Registry of the General Court on 21 February 2014,
having regard to the reply of the applicant lodged at the Registry of the General Court on 16 May 2014,
having regard to the rejoinder of the intervener lodged at the Registry of the General Court on 24 July 2014,
further to the hearing on 22 January 2015, in which the intervener did not participate,
gives the following
Judgment
Background to the dispute
1 On 11 May 2011, the applicant, Cosmowell GmbH, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 Registration as a mark was sought for the following figurative sign:
3 The goods for which registration was sought fall within Class 5 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: ‘pharmaceutical and veterinary preparations; dietetic preparations adapted for medical use; nutritional supplements; food supplements for medical purposes; food supplements, not for medical purposes; mineral food supplements’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 118/2011 of 27 June 2011.
5 On 14 September 2011, the intervener, Haw Par Corp. Ltd, filed a notice of opposition under 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 The opposition was based, in particular, on the earlier Community figurative mark, registered on 25 November 1998 under number 228288 and renewed until 16 April 2016, reproduced below:
7 The earlier mark designates, in particular, goods within class 5 of the Nice Agreement and corresponding to the following description: ‘Pharmaceutical preparations; medical and medicinal preparations for humans; plasters, bandages and materials for dressings; disinfectants; preparations for destroying vermin; fungicides; herbicides; insecticides’.
8 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
9 On 30 August 2012, the Opposition Division upheld the opposition in its entirety.
10 On 29 October 2012, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
11 By decision of 5 September 2013 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal, affirming the existence of a likelihood of confusion. To that end, the Board of Appeal held in particular as follows:
– the relevant public had a high level of attention and the territory in question was the entire European Union, although it was appropriate to consider the German-speaking public first;
– some of the goods in question were identical and some were similar;
– the comparison of the signs, which had to take the earlier mark into account as registered and not as alleged to be used, indicated that they had an average degree of visual similarity and a high degree of conceptual similarity, whereas it was not possible to compare them phonetically;
– the earlier mark had average inherent distinctive character;
– there was a likelihood of confusion in the mind of the public, regardless of whether the mark had acquired enhanced distinctive character through the use which had been made of it in Germany.
Forms of order sought by the parties
12 In the application, the applicant claims that the Court should:
– annul the contested decision;
– dismiss the opposition;
– order the intervener to pay the costs incurred by the applicant, including those relating to the proceedings before the Board of Appeal.
13 At the hearing, first, in response to a question from the General Court, the applicant modified its second head of claim so as to limit it to dismissal of the opposition in so far as this was based on the earlier mark, reproduced in paragraph 6 above, to the exclusion of the other marks relied on by the intervener in support of its opposition, which had not been examined in the contested decision.
14 Secondly, the applicant added to the forms of order it sought by requesting that OHIM should also be ordered to pay the costs.
15 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
16 At the hearing, OHIM, first, asserted that the applicant’s second head of claim was inadmissible as presented in the application and, secondly, indicated that it would leave the admissibility ratione temporis of the applicant’s new request concerning costs to the wisdom of the General Court.
Law
17 The applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
18 In substance, it asserts that, in comparing the conflicting signs, the Board of Appeal did not take the mark applied for into account as a whole. Furthermore, it is said that the Board of Appeal was wrong to hold that it was not possible to compare the conflicting signs phonetically due to the purely figurative nature of the earlier mark, and that it failed to take into account the form in which the earlier mark had actually been used.
19 OHIM and the intervener dispute the applicant’s arguments.
20 As provided in 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 two marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
21 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
The relevant public
22 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and case-law cited).
23 In the present case, first, in paragraph 18 of the contested decision, the Board of Appeal observed that, as the earlier mark was a Community mark, the relevant territory was the European Union, although it had regard, ‘first’, to the perception of the German-speaking public. Secondly, in that paragraph and also in paragraphs 30 and 31 of the contested decision, it held in substance that the relevant public, which was made up of the general public as well as specialists in the pharmaceutical, medical and veterinary fields, had a high level of attention, given that the goods covered by the conflicting marks affected, to a greater or lesser degree, the health of humans and pets.
24 It is appropriate to uphold the Board of Appeal’s findings in relation to the relevant territory and the level of attention of the public, as they are consistent with the case-law (see, to this effect, judgments of 15 December 2010 in Novartis v OHIM — Sanochemia Pharmazeutika (TOLPOSAN), T‑331/09, ECR, EU:T:2010:520, paragraph 26 and the case-law cited, and 11 June 2014, Golam v OHIM — meta Fackler Arzneimittel (METABIOMAX), T‑281/13, EU:T:2014:440, paragraphs 30 to 32).
Comparison of the goods
25 According to settled case-law, in order to assess the similarity of the goods or services concerned, all the relevant factors of the relationship between those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and case-law cited).
26 In the present case, in paragraph 19 of the contested decision, the Board of Appeal affirmed the conclusions of the Opposition Division, which had not been challenged before the Board of Appeal, that the ‘pharmaceutical and veterinary preparations’ covered by the mark applied for were identical to the ‘pharmaceutical preparations’ protected by the earlier mark, whereas the other goods at issue were similar.
27 That assessment should be upheld, as it conforms to the case-law (see, in this regard, judgments of 29 February 2012 in Certmedica International and Lehning entreprise v OHIM — Lehning entreprise and Certmedica International (L112), T‑77/10 and T‑78/10, EU:T:2012:95, paragraphs 93 and 94, and of 11 June 2014 in Golam v OHIM — Pentafarma (METABOL), T‑486/12, EU:T:2014:508, paragraph 40) and in any event is not challenged by the parties.
Comparison of the signs
28 The overall assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).
29 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 judgment in OHIM v Shaker, paragraph 28 above, EU:C:2007:333, 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 (see judgment in OHIM v Shaker, paragraph 28 above, EU:C:2007:333, paragraph 42). That could be the case, in particular, where that component is capable alone of dominating the image of that mark which members of the relevant public keep in their minds, such that all the other components of the mark are negligible in the overall impression which it creates (judgment of 20 September 2007 in Nestlé v OHIM, C‑193/06, EU:C:2007:539, paragraphs 42 and 43).
30 In the present case, the Board of Appeal, first, observed that the comparison of the signs must be limited to consideration of the signs as they appear on the OHIM register and, secondly, held that they had an average degree of visual similarity and a high degree of conceptual similarity, whereas it was not possible to compare them phonetically.
31 The applicant, first, asserts that it was necessary to take account of the form in which the earlier mark had been used by the intervener, and, secondly, challenges the assessment of the three similarities made by the Board of Appeal.
32 OHIM and the intervener dispute the applicant’s arguments.
The applicant’s arguments concerning the form in which the earlier mark is said to have been used
33 The applicant maintains that, in assessing the similarity of the conflicting signs, the Board of Appeal failed to take account of the fact that the intervener had not used the earlier mark as registered, that is, as a purely figurative mark consisting of a representation of a tiger. It is said that the intervener added the word element ‘tiger balm’ to that representation, as well as characters from a writing system of the far east, which weakened the similarity between the signs, particularly as the mark applied for did not make any allusion to the culture of the far east.
34 OHIM and the intervener reply that the Board of Appeal was correct to base its comparison of the conflicting signs on the forms in which they appear in the OHIM register.
35 Those arguments of the applicant cannot succeed. It is apparent from the case-law that, in principle, the likelihood of confusion is to be assessed on the basis of a comparison between the mark applied for, as described in the OHIM register, and the earlier mark, as registered (see, to this effect, judgments of 13 September 2007 in Il Ponte Finanziaria OHIM, C‑234/06 P, ECR, EU:C:2007:514, paragraph 62, and 7 February 2012 in Dosenbach-Ochsner v OHIM — Sisma (Representation of elephants in a rectangle), T‑424/10, ECR, EU:T:2012:58, paragraph 38).
36 That conclusion is in accordance with the principle that, if a party who has made an application for a Community mark which is subject to opposition proceedings based on an earlier mark is of the view that that earlier mark has only been used in a form which alters its distinctive character, that party may request proof of genuine use of the earlier mark, in accordance with Article 42(2) of Regulation No 207/2009. It is in the course of examining such a request that OHIM can consider the issue, referred to in Article 15(1)(a) of that regulation, of whether the earlier mark has only been genuinely used in a form which differs from that in which it was registered, and which alters its distinctive character. If that is the case, the opposition is dismissed without OHIM making any finding as to the possible existence of a likelihood of confusion.
37 In the present case, the applicant did not make any express request, before the Opposition Division, for the intervener to furnish proof of genuine use of the earlier mark. In this regard, it should be noted that, in contrast to its assertions at the hearing, the observations on the opposition which the applicant presented to OHIM on 20 February 2012 did not incorporate any such request, but were limited to maintaining that, in assessing the likelihood of confusion, the form in which the earlier mark had been used ought to be taken into account.
38 According to settled case-law, the issue of proof of genuine use must be raised expressly and timeously before the Opposition Division, genuine use being an issue which, once raised by the party applying for the mark, must be settled before a decision is given on the opposition proper (see, to this effect, judgment of 22 March 2007 in Saint-Gobain Pam v OHIM — Propamsa (PAM PLUVIAL), T‑364/05, ECR, EU:T:2007:96, paragraphs 34 and 37 and the case-law cited).
39 Thus this issue may not be raised for the first time either before the Board of Appeal (see, to this effect, judgment in PAM PLUVIAL, paragraph 38 above, EU:T:2007:96, paragraph 39) or before the General Court (see, to this effect, judgment of 7 November 2007, NV Marly v OHIM — Erdal (Top iX), T‑57/06, EU:T:2007:333, paragraph 18).
40 Furthermore, the argument that the applicant seeks to make on the basis of the judgment of 18 July 2013 in Specsavers International Healthcare and Others (C‑252/12, ECR, EU:C:2013:497) must be rejected. In that judgment, the Court of Justice held that, where a Community mark is registered in black and white, not in colour, but the proprietor has used it extensively in a particular colour or combination of colours with the result that it has become associated in the mind of a significant portion of the public with that colour or combination of colours, the colour or colours which a third party uses in order to represent a sign alleged to infringe that trade mark are relevant in the global assessment of the likelihood of confusion or unfair advantage under that provision (judgment in Specsavers International Healthcare and Others, EU:C:2013:497, paragraphs 37 and 41). However, the circumstances of this case are different from those considered by the Court of Justice in giving that judgment, as the applicant claims that the intervener’s earlier mark should not be protected as it is registered, but only as it is said to have been used. By contrast, the issue addressed by the Court of Justice concerned, in particular, whether the likelihood of confusion between two marks is increased by the fact that the later mark is not only in the same form as the earlier mark, as registered, but also in the same colours as that mark as actually used.
41 Having regard to all of the above, it is appropriate to reject the present arguments of the applicant and to base the evaluation of the merits of Board of Appeal’s assessment of the similarity of the signs on the earlier mark as registered, that is, in the purely figurative form of a representation of a tiger.
Visual comparison
42 In paragraph 25 of the contested decision, the Board of Appeal held that the conflicting signs had an average degree of visual similarity, on the basis that the similarities arising from their figurative elements were not negated by the fact that only the mark applied for had a word element.
43 First, the applicant asserts that the representations of a tiger which appear in each of the conflicting signs are different, particularly with regard to the direction of the leap the animal is making, the visibility of its claws, the pattern of its hide and the colour of the tip of its tail. These differences are said to be all the more significant in that both of the signs in issue are said to be realistic representations of a tiger. Secondly, it emphasises that only the mark applied for includes a word element, namely the word ‘gelenkgold’, which is said to have average distinctive character and not to be negligible.
44 OHIM and the intervener observe that the word element of a complex mark is not necessarily dominant within that mark, as the figurative element may retain an independent distinctive position, and that the figurative elements of the conflicting signs, despite their slight differences, would both be kept in the minds of the relevant public as images of a leaping tiger with its mouth open and its tail erect.
45 First, it should be noted that it is apparent from paragraphs 22 to 25 of the contested decision that in carrying out the visual comparison of the conflicting signs the Board of Appeal took account, on the one hand, of all the elements of the mark applied for and, on the other, the figurative element which constitutes the earlier mark. This approach is to be approved, on the basis that the word element ‘gelenkgold’ in the mark applied for is not in any sense negligible within the meaning of the case-law referred to in paragraph 29 above, any more than the representation of a tiger.
46 Furthermore, in the mark applied for, the size and position of the representation of a tiger is such that it will inevitably be noticed by the relevant public.
47 Secondly, the Board of Appeal’s conclusion, set out in paragraph 24 of the contested decision, that, in essence, the differences between the two representations of tiger at issue do not particularly affect the visual similarity of the signs, should be upheld. The average consumer only rarely has the chance to make a direct comparison between the different signs but must place his trust in the imperfect picture of them that he has kept in his mind (see judgment of 26 April 2007 in Alcon v OHIM, C‑412/05 P, ECR, EU:C:2007:252, paragraph 60 and the case-law cited).
48 Thirdly, it must be observed that, according to settled case-law, where a mark is composed of word elements and figurative elements, the former are, as a rule, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting the name rather than by describing the figurative element of the mark (see judgment of 7 February 2013 in AMC-Representações Têxteis v OHIM — MIP Metro (METRO KIDS COMPANY), T‑50/12, ECR, EU:T:2013:68, paragraph 29 and the case-law cited). That is so in the present case, in that the word ‘gelenkgold’ has an important place within the mark applied for and is written diagonally upward and to the right, in bold characters with a thick black border around the letters, which are in white.
49 In the light of those considerations, the Board of Appeal’s finding that the conflicting signs had an average degree of visual similarity must be overturned, the degree of similarity being, in reality, only weak.
Phonetic comparison
50 In paragraph 26 of the contested decision, the Board of Appeal held that it was not possible to compare the conflicting signs phonetically, inasmuch as the earlier mark had no word element.
51 The applicant criticises the Board of Appeal for thus ignoring the word element of the mark applied for, which is said to enable any phonetic similarity to be ruled out.
52 OHIM and the intervener maintain that the Board of Appeal was right to conclude that it was not possible to make a phonetic comparison in the present case.
53 In this regard, first, it is apparent from the case-law that, where a purely figurative mark represents a shape which the relevant public is easily able to recognise and associate with a specific, concrete word, they will use that word to refer to the mark, whereas if a figurative mark also includes a word element, in general it will be through the use of that word element that the relevant public will refer to the mark.
54 Thus, first, in its judgment of 7 September 2006 in L & D v OHIM — Sämann (Aire Limpio) (T‑168/04, ECR, EU:T:2006:245, paragraph 96), the Court of First Instance (as it then was) held that there was a phonetic difference between the conflicting signs, inasmuch as the earlier mark, which was purely figurative and consisted of a representation of a pine tree, could be communicated orally through a description of the sign, whereas the mark applied for, which consisted of a figurative element showing a pine tree bearing a similarity to that of the earlier mark and the word element ‘aire limpio’, could be expressed orally through the use of that word element. The same conclusion was reached in the judgment of 2 July 2009 in Fitoussi v OHIM — Loriot (IBIZA REPUBLIC) (T‑311/08, EU:T:2009:244, paragraph 43), in respect of a purely figurative earlier mark representing a star and a mark applied for which, in addition to a star, incorporated the word element ‘ibiza republic’.
55 Secondly, the judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others) (T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraphs 93 and 94), the Court of First Instance (as it then was) found that there was a phonetic similarity between, on one hand, the marks applied for, consisting of a stag’s head and the word element ‘venado’ and, on the other, a purely figurative earlier mark representing a stag’s head. It was observed that the Spanish public could use the word ‘venado’ (stag, big game animal) to designate the earlier mark, which did not contain any word element. Similar reasoning was followed in the judgment of 17 April 2008 in Dainichiseika Colour & Chemicals Mfg. v OHIM — Pelikan (Representation of a pelican) (T‑389/03, EU:T:2008:114, paragraphs 93 and 94), concerning earlier figurative marks incorporating a representation of a pelican as well as the word element ‘pelikan’, and a mark applied for consisting solely of a representation of a pelican. In this regard, account was taken of the fact that, in the languages used by the relevant public, the image of a pelican was orally expressed through a word bearing a very high degree of similarity to that word element.
56 Secondly, it should be observed that the case-law relied on by OHIM does not call the principle set out in paragraph 53 above into question.
57 First, OHIM refers to the judgment of 25 March 2010 in Nestlé v OHIM — Master Beverage Industries (Golden Eagle and Golden Eagle Deluxe) (T‑5/08 to T‑7/08, ECR, EU:T:2010:123), given in joined cases which involved comparing, on one hand, complex marks incorporating the word elements ‘golden eagle’ or ‘golden eagle deluxe’, as well as figurative elements representing coffee beans and a coffee mug and, on the other hand, a purely figurative earlier mark which contained only those same figurative elements. The Board of Appeal had found that there was no likelihood of confusion on the basis that the signs were not similar (judgment in Golden Eagle and Golden Eagle Deluxe, EU:T:2010:123, paragraph 19). The applicant, proprietor of the earlier mark, criticised the Board of Appeal for not having carried out a phonetic comparison of the signs, which, it was said, would have been possible despite the lack of any word element in that mark. The General Court rejected that argument, which, in essence, sought to establish a phonetic similarity on the basis that the figurative elements of the signs were identical. It did not hold that such a comparison was impossible, but considered that it was not relevant. In this regard, the General Court observed that, in order to refer to the marks applied for, the relevant public would cite their word element, but would not describe their figurative element (judgment in Golden Eagle and Golden Eagle Deluxe, EU:T:2010:123, paragraphs 66 and 67).
58 Hence, in the cases which gave rise to the Golden Eagle and Golden Eagle Deluxe judgment, referred to in paragraph 57 above (EU:T:2010:123), the phonetic comparison relied on by the applicant in question was not relevant, because, having regard to the facts of the case, it would not have provided a basis for reversing the Board of Appeal’s conclusion that the conflicting signs were different. Accordingly, it cannot be held that that judgment retreats from the principle or the case-law referred to in paragraphs 53 to 55 above; on the contrary, it is an application of that principle.
59 Secondly, OHIM seeks to rely on the judgment in Representation of elephants in a rectangle, paragraph 35 above (EU:T:2012:58), a judgment given in a case concerning a purely figurative mark representing several elephants in a rectangle, which was subject to invalidity proceedings on the basis of purely figurative earlier marks representing an elephant and the purely verbal earlier mark ELEFANTEN. The applicant, proprietor of the earlier marks, asserted in particular that the Board of Appeal had been wrong in stating that there was a phonetic difference between the conflicting signs. In this regard, the General Court held, on the basis of the judgment in Golden Eagle and Golden Eagle Deluxe, paragraph 57 above (EU:T:2010:123), that similarity of this kind was not relevant, essentially because the absence of any word element in the mark at issue meant that any spoken reference to it would necessarily be through a description of its visual or conceptual content. Accordingly, a phonetic comparison between the conflicting signs had no independent value with respect to the visual and conceptual comparisons (see, to this effect, judgment in Representation of elephants in a rectangle, paragraph 57 above, EU:T:2012:58, paragraphs 45 and 46).
60 It should be emphasised that the judgment in Representation of elephants in a rectangle, paragraph 35 above (EU:T:2012:58), concerned a particular case in which a purely figurative sign had to be compared to other purely figurative signs and to a purely verbal sign whose meaning coincided with that of the figurative signs. It was only in those circumstances that the General Court held that the phonetic comparison was irrelevant and added nothing to the two other comparisons.
61 Accordingly, the judgment in Representation of elephants in a rectangle, paragraph 35 above (EU:T:2012:58), cannot be interpreted as calling the principle set out in paragraph 53 above into question.
62 Thirdly, it should be noted that while the General Court, in its judgment of 17 May 2013 in Sanofi Pasteur MSD v OHIM — Mundipharma (Representation of two crossing sickles) (T‑502/11, EU:T:2013:263, paragraph 49), upheld the Board of Appeal’s conclusion that no phonetic comparison of the conflicting signs could be carried out, it pointed out that the signs in question were not only purely figurative, but also abstract. By contrast, the principle set out in paragraph 53 above concerns purely figurative signs which, like the representation of a tiger in the present case, are not abstract, but can immediately be associated with a specific, concrete word.
63 Furthermore, it should be observed that that principle does not conflict with the case-law established by the judgment of 8 October 2014 in Fuchs v OHIM — Les Complices (Star within a circle) (T‑342/12, ECR, EU:T:2014:858, paragraphs 46 to 48). While the General Court, on that occasion, affirmed that it was not possible to make a phonetic comparison of two purely figurative marks both representing a star, it nevertheless referred to the case-law according to which, in principle, a phonetic comparison is irrelevant, not impossible, in relation to figurative marks. In any event, the judgment in Star within a circle, referred to above (EU:T:2014:858), deals with the situation where the conflicting signs are all purely figurative, whereas the situation addressed in paragraph 53 above, which is relevant to the present case, concerns the phonetic comparison between a purely figurative mark and a figurative mark which also includes a word element.
64 Having regard to the above considerations, it must be held that the Board of Appeal was wrong to conclude that, in the present case, it was impossible to make a phonetic comparison of the conflicting signs.
65 Taking into account the fact that the relevant public will refer to the mark applied for by uttering its word element ‘gelenkgold’, whereas in relation to the earlier mark, the relevant public can only utter the word ‘tiger’, it must be held that the conflicting signs are phonetically different, contrary to the conclusion reached by the Board of Appeal.
Conceptual comparison
66 In paragraph 27 of the contested decision, the Board of Appeal held that the conflicting signs exhibited a high degree of conceptual similarity, as they were both associated with the idea of a leaping tiger, which suggested the concepts of strength and agility. It added that the German-speaking public would understand the word element ‘gelenkgold’ of the mark applied for as an allusion to healthy joints, which reinforces the concept of agility conveyed by the representations of tigers.
67 The applicant asserts, essentially, that the fact that an image of a tiger appears in each of the conflicting signs does not give rise to any conceptual similarity on which a finding of a likelihood of confusion could be based. Furthermore, it criticises the Board of Appeal for not taking account of the word element of the mark applied for, whose meaning would not be understood by the non-German-speaking public, with the possible exception of the word ‘gold’.
68 OHIM defends the Board of Appeal’s assessment as well-founded and specifically asserts that the word ‘gelenkgold’ would not be understood by the non-German-speaking public.
69 The intervening party adds that the word element ‘gelenkgold’ is very weakly distinctive in relation to the products covered by the conflicting marks, whereas that cannot be said of the representation of a tiger.
70 In the first place, in relation to those of relevant public who understand German, and who thus recognise in the word ‘gelenkgold’ the conjunction of the words ‘gelenk’ (joint) and ‘gold’ (gold), the fact that it is only the mark applied for that contains this word element, which does not refer directly to the same ideas as those associated with the representation of a tiger, makes it impossible to hold that the conflicting signs have the high degree of conceptual similarity which the Board of Appeal found to exist. In fact, the signs have only an average degree of similarity in so far as the German public is concerned.
71 Secondly, in relation to the non-German-speaking section of the relevant public, first, it must be observed that is not clear from the contested decision whether the Board of Appeal took account of this section in its assessment of conceptual similarity. Its conclusion that the degree of conceptual similarity between the signs in question is high appears immediately after its finding that, for the German-speaking public, the word ‘gelenkgold’ would reinforce the message of agility conveyed by the representation of a tiger. Secondly, on the assumption that the Board of Appeal considered that its conclusion as to conceptual similarity was valid for the whole of the relevant public, this cannot be upheld even in relation to the non-German speaking public. That public would recognise in the word ‘gelenkgold’ the word ‘gold’, which does not appear in the earlier mark. Accordingly, in relation to the non-German-speaking public as well as the German-speaking public, the conflicting signs had only an average degree of conceptual similarity.
72 Having regard to all of the above, it must be concluded that the conflicting signs exhibit a low degree of visual similarity and an average degree of conceptual similarity, whereas they are phonetically different.
Likelihood of confusion
73 The overall assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and VENADO with frame and Others, paragraph 55 above, EU:T:2006:397, paragraph 74).
74 Furthermore, the more distinctive the earlier trade mark, the greater will be the likelihood of confusion (judgment of 11 November 1997 in SABEL, C‑251/95, ECR, EU:C:1997:528, paragraph 24).
75 In paragraphs 29 to 32 of the contested decision, the Board of Appeal held that, having regard to its findings as to the identical or similar nature of the products and the similarity of the signs, as well as the normal inherent distinctive character of the earlier mark, there was a likelihood of confusion between the conflicting signs, in spite of the increased level of attention of the relevant public and regardless of whether the earlier mark had acquired enhanced distinctive character through the use which the intervener had made of it in Germany.
76 That conclusion of the Board of Appeal cannot be upheld. It was reached by overestimating the degrees of visual and conceptual similarity between the conflicting signs, having wrongly ignored the phonetic differences between them and having chosen not to examine the evidence presented by the intervener in order to demonstrate that the earlier mark enjoyed enhanced distinctive character by reason of the use which the intervener had made of it. The impact of those errors on the conclusion that there was a likelihood of confusion is all the greater when account is taken of the increased level of attention of the relevant public, which was rightly recognised by the Board of Appeal (see paragraph 23 above).
77 In those circumstances, the applicant’s sole plea in law must succeed.
Conclusions as to the outcome of the action
78 Having regard to all of the above considerations, it is appropriate to allow the applicant’s first head of claim and annul the contested decision.
79 As to the applicant’s second head of claim, which, following the clarification given at the hearing, is to the effect that the General Court should dismiss the opposition in so far as it is based on the earlier mark reproduced in paragraph 6 above, it should be noted that this is a request to alter the contested decision (see, by analogy, judgment of 8 October 2014 in Laboratoires Polive v OHIM — Arbora & Ausonia (DODIE), T‑77/13, EU:T:2014:862, paragraph 61).
80 In this connection, it should be recalled that the power of the Court to alter decisions pursuant to Article 65(3) of Regulation No 207/2009 does not have the effect of conferring on the Court the power to carry out an assessment on which the Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the Court, after reviewing the assessment made by the Board, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (judgment of 5 July 2011 in Edwin v OHIM, C‑263/09 P, ECR, EU:C:2011:452, paragraph 72).
81 In the present case, the conditions for the exercise of the Court’s power to alter decisions are clearly not satisfied. The Board of Appeal did not examine the question of whether the earlier mark had acquired enhanced distinctive character through the use which the intervener had made of it, whereas, having regard to the case-law referred to in paragraph 74 above, it is not inconceivable that this factor could have justified a finding of a likelihood of confusion.
82 In this regard, it should be observed that the intervener appears to be asking the General Court to take into account, for the purposes of dismissing the action, evidence which it produced before the Opposition Division and the Board of Appeal in order to demonstrate such use of the earlier mark.
83 As regards this request, it suffices to observe that, since it is clear from paragraph 32 of the contested decision that the Board of Appeal did not make a determination on that evidence, no consideration relating to this point can have any effect on the legality of the contested decision. Accordingly, the Court cannot accept this argument of the intervener (see, by analogy, judgment in DODIE, paragraph 79 above, EU:T:2014:862, paragraph 58).
84 Having regard to the above, despite the clarification given at the hearing, the applicant’s second head of claim must be dismissed.
Costs
85 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Where there are several unsuccessful parties the General Court shall decide how the costs are to be shared.
86 As OHIM and the intervener have essentially been unsuccessful, they should be ordered to pay the costs, in accordance with the form of order sought by the applicant, as supplemented at the hearing. In this regard, it should be observed that, according to settled case-law, the fact that the successful party did not particularise its application for costs until the hearing does not prevent the court from awarding them (see, to this effect, judgments of 5 October 2005 in Bunker & BKR v OHIM — Marine Stock (B.K.R.), T‑423/04, ECR, EU:T:2005:348, paragraph 84, and VENADO with frame and Others, paragraph 55 above, EU:T:2006:397, paragraph 116).
87 In addition, since the applicant has also claimed that OHIM and the intervener should be ordered to pay the costs it incurred in the proceedings before the Board of Appeal, it should be borne in mind that, under Article 136(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. Accordingly, OHIM and the intervener must also be ordered to pay those costs.
88 As to the division of the costs, it is a fair assessment of the circumstances of the case to order that OHIM and the intervener should each bear, in addition to their own costs, half of those incurred by the applicant, both before the General Court and before the Board of Appeal.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1. Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 5 September 2013 (Case R 2013/2012-4);
2. Dismisses the action as to the remainder;
3. Orders OHIM to bear its own costs as well as half of those incurred by Cosmowell GmbH, both before the General Court and before the Board of Appeal;
4. Orders Haw Par Corp. Ltd to bear its own costs as well as half of those incurred by Cosmowell, both before the General Court and before the Board of Appeal.
Delivered in open court in Luxembourg on 7 May 2015.
[Signatures]