JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
15 April 2010 (*)
(Community trade mark – Invalidity proceedings – Community word mark EGLÉFRUIT – Earlier Community word mark UGLI and earlier national figurative mark ‘UGLI Fruit – but the affliction is only skin deep’ – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) and Article 52(1)(a) of Regulation (EC) No 40/94 (now Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009))
In Case T‑488/07,
Cabel Hall Citrus Ltd, established in George Town, Grand Cayman (Cayman Islands), represented by C. Rogers, barrister,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) being
Casur S. C. Andaluza, established in Viator (Spain),
ACTION brought against the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 19 September 2007 (Case R 293/2007-1), relating to invalidity proceedings between Cabel Hall Citrus Ltd and Casur S.C. Andaluza,
THE GENERAL COURT (Sixth Chamber),
composed of A.W.H. Meij (Rapporteur), President, V. Vadapalas and L. Truchot, Judges,
Registrar: N. Rosner, Administrator,
having regard to the application lodged at the Registry of the Court on 20 December 2007,
having regard to the response lodged at the Court Registry on 22 May 2008,
further to the hearing on 2 December 2009,
gives the following
Judgment
Background to the dispute
1 On 31 October 2003, Casur S.C. Andaluza 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 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark in respect of which registration was sought is the word sign EGLÉFRUIT (‘the EGLÉFRUIT mark’ or ‘the contested mark’).
3 The goods in respect of which registration was sought are in Classes 29, 30 and 31 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 29: ‘Meat, fish, poultry and games; meat extracts; preserved, dried and cooked vegetables and fruits; jellies, jams, fruit sauces; eggs, milk and milk products; edible fats and oils’;
– Class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacles; yeast, baking-powder; salt, mustard; vinegar sauces (condiments); relish; ice’;
– Class 31: ‘Agricultural, horticultural and forestry products and grains (not included in other classes); live animals; fresh vegetables and fruits; seeds, natural plants and flowers; animal feed, malt’.
4 The contested mark was registered as a Community trade mark under No 3 517 431 and that registration was published in Community Trade Marks Bulletin No 33/2005 of 15 August 2005.
5 On 9 February 2006, the applicant, Cabel Hall Citrus Ltd, filed an application for a declaration of invalidity of the contested mark.
6 In support of that application for a declaration of invalidity, the applicant relied on the earlier Community word mark UGLI, registered on 22 October 2004 under No 158 071 in respect of the goods in Classes 29, 31 and 32 which correspond, for each of those classes, to the following description:
– Class 29: ‘Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats’;
– Class 31: ‘Agricultural, horticultural and forestry products and grains not included in other classes; living animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt’;
– Class 32: ‘Beers; mineral and aerated waters and other non‑alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’.
7 In support of its application for a declaration of invalidity, the applicant also relied on the following earlier national figurative mark, registered in the United Kingdom on 1 March 1956 under No 751 468:
8 That earlier figurative mark covers the goods in Class 31 which correspond to the following description: ‘Fresh citrus fruit. Cancelled in respect of oranges’.
9 The application for a declaration of invalidity concerned the abovementioned goods in Classes 29 and 31, covered by the contested mark.
10 The application for a declaration of invalidity was based on Article 52(1)(a) and Article 8(1)(b) of Regulation No 40/94 (now Article 53(1)(a) and Article 8(1)(b) of Regulation No 207/2009).
11 By decision of 19 December 2006, the Cancellation Division dismissed the application for a declaration of invalidity on the ground that the earlier signs were not, as a whole, similar to the contested mark, so that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.
12 On 15 February 2007, the applicant filed a notice of appeal against the Cancellation Division’s decision.
13 By decision of 19 September 2007 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the applicant’s appeal and upheld the Cancellation Division’s decision. It held, essentially, that in light of the visual differences and absence of a conceptual link between the signs at issue, and despite the fact that a low degree of phonetic similarity can be identified, the marks at issue were overall dissimilar and, therefore, there was no likelihood of confusion.
Forms of order sought
14 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to declare invalid the EGLÉFRUIT mark;
– order OHIM 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, the applicant declared that it was withdrawing its second head of claim, formal note of which was taken by the Court in the minutes of the hearing.
Law
Arguments of the parties
17 In support of its action, the applicant relies on a single plea in law alleging infringement of Article 52(1)(a) of Regulation No 40/94, in conjunction with Article 8(1)(b) of Regulation No 40/94.
18 The applicant denies that the marks at issue are dissimilar. Concerning the similarity between the EGLÉFRUIT mark and the earlier word mark UGLI, it asserts that, visually, the suffix ‘fruit’ of the EGLÉFRUIT mark has a descriptive character in a significant part of the relevant territory and is, consequently, negligible in the perception of the relevant public. Furthermore, it argues that, given its actual use, the earlier mark UGLI in fact takes the form ‘ugli fruit’. Consequently, the marks at issue are likely to be visually perceived as either UGLI Fruit/EGLÉFRUIT or UGLI/EGLÉ.
19 With regard to phonetics, the applicant also points out the descriptive character of the suffix ‘fruit’ in the EGLÉFRUIT mark, and thus the negligible nature of the suffix in the perception of the relevant public in a significant part of the relevant territory, and the actual use of the earlier mark UGLI in the form ‘ugli fruit’, for the purposes of maintaining that the Board of Appeal erred in finding that the suffix ‘fruit’ in the contested mark produces a difference between that mark and the earlier Community trade mark. The applicant adds that the Board of Appeal erred in not finding that, for English-speaking consumers, there is a high degree of phonetic similarity between the first part of the contested mark, ‘eglé’, and the earlier word mark UGLI. That phonetic similarity is also very important with regard to the earlier figurative mark ‘UGLI Fruit – but the affliction is only skin deep’, in view of the fact that the words ‘ugli fruit’ constitute the dominant component of that earlier mark.
20 Furthermore, no conceptual difference between the contested mark and the earlier marks can offset the abovementioned visual and phonetic similarities, since the marks at issue are devoid of meaning.
21 Concerning the global assessment of the likelihood of confusion between the EGLÉFRUIT mark and the earlier word mark UGLI, the applicant claims that the Board of Appeal erred in the assessment of how the goods referred to by the marks at issue are purchased and, therefore, in the assessment of the average consumer’s level of attention, which is, in its submission, very low. It also disputes the Board of Appeal’s conclusion that there is no likelihood of confusion between the EGLÉFRUIT mark and the earlier figurative mark ‘UGLI Fruit – but the affliction is only skin deep’.
22 OHIM disputes the validity of the applicant’s arguments.
Findings of the Court
23 Under Article 52(1)(a) of Regulation No 40/94, a Community trade mark is to be declared invalid on application to OHIM where there is an earlier trade mark as referred to in Article 8(2) of that regulation (now Article 8(2) of Regulation No 207/2009) and, in particular, the conditions set out in Article 8(1)(b) of that regulation are fulfilled.
24 Under Article 8(2)(a)(i) and (ii) of Regulation No 40/94 (now Article 8(2)(a)(i) and (ii) of Regulation No 207/2009), to which Article 52(1)(a) expressly refers, ‘earlier trade marks’ means, in particular, Community trade marks and trade marks registered in a Member State, provided that the date of application for their registration is earlier than the date of application for registration of the Community trade mark which is contested.
25 Furthermore, the relative ground for invalidity arising under Article 52(1)(a) of Regulation No 40/94, in conjunction with Article 8(1)(b) of that regulation, corresponds to the relative ground for refusal of registration laid down in the latter provision. Therefore, the case-law relating to the likelihood of confusion, within the meaning of Article 8(1)(b) of that regulation, is also relevant in the present context (see, to that effect, Case T-288/03 TeleTech Holdings v OHIM – Teletech International (TELETECH GLOBAL VENTURES) [2005] ECR II-1767, paragraph 75).
26 According to settled case-law, the risk that the relevant public might believe that the goods or services designated by the marks in dispute come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion.
27 According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services at issue, and taking into account all factors relevant to the circumstances of the case, in particular the interdependence of the similarity of the signs and that of the goods or services designated (see Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
28 Furthermore, the perception of the 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 Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 25).
29 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks in dispute by the consumer of the goods at issue in that territory. However, it should be noted that, for a Community trade mark to be declared invalid, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 40/94 exists in part of the European Union (see, to that effect and by analogy, Joined Cases T‑81/03, T-82/03 and T-103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II-5409, paragraph 76 and the case-law cited).
30 In the present case, it should be noted, first of all, that the applicant does not dispute the findings of the Board of Appeal set out in paragraphs 19 and 34 of the contested decision, according to which, in relation to the earlier word mark UGLI and figurative mark ‘UGLI Fruit – but the affliction is only skin deep’, the relevant public consists respectively of the average consumer in the European Union, including the United Kingdom, and the average consumer in the United Kingdom.
31 Similarly, the parties do not deny that the goods in question are identical. Only the Board of Appeal’s assessment of the similarity of the marks at issue and of the existence of a likelihood of confusion is disputed.
The similarity of the signs
32 According to settled case-law, the assessment of the visual, phonetic and conceptual similarity of the signs in question must be based on the overall impression given by those signs, bearing in mind, inter alia, their distinctive and dominant components (see Case T-292/01 Philips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-4335, paragraph 47 and the case-law cited).
– The similarity between the marks EGLÉFRUIT and UGLI
33 Concerning the visual similarity of the signs, in support of the finding that the marks at issue were dissimilar overall, the Board of Appeal noted, in paragraph 22 of the contested decision, that they differed in length and that, despite the fact that the signs at issue have the letters ‘g’ and ‘l’ as respectively the second and third letters, there remained numerous differences as a result of the presence of other letters. The Board of Appeal held, moreover, that consumers normally paid more attention to the first letters in a mark, which were different in the present case.
34 The applicant’s arguments do not undermine the validity of those findings. As OHIM contends, it should be noted that the similarity of the signs must be assessed on the basis of the overall impression that they give. Therefore, although it is appropriate to take into consideration the distinctive and dominant elements of the marks for the purposes of assessing the similarity of the signs, no element can be totally ignored because of its low degree of distinctiveness. Furthermore, the element ‘fruit’ is part of the EGLÉFRUIT sign such that, independently of its very low degree of distinctiveness, it cannot be ignored in the assessment of the contested mark as a whole. It therefore cannot be accepted, contrary to the applicant’s claim, that the element ‘fruit’ in the contested mark can be disregarded in the assessment of the similarity of the marks at issue.
35 Furthermore, as regards the claim that the earlier word mark UGLI is, in practice, accompanied by the word ‘fruit’, it must be pointed out, as OHIM correctly recalls, that the assessment of the similarity of the marks takes into consideration those marks in their entirety, as they are registered or applied for. It is therefore not necessary to take account of the word elements likely in practice to be combined with the registered sign, as the protection afforded by the registration of a word mark relates only to the word indicated in the application for registration (see, to that effect, Joined Cases T-183/02 and T-184/02 El Corte Inglés v OHIM – González Cabello and Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II-965, paragraph 104).
36 As regards phonetic similarity, the Board of Appeal held that the pronunciation of the two signs was globally different, due to the element ‘fruit’ and the fourth letter ‘é’ in the contested mark, in spite of a slight phonetic similarity, for the English‑speaking public, between the first element of the contested mark ‘eglé’ and the earlier mark UGLI.
37 Contrary to the applicant’s claim, the marks at issue cannot be considered to be phonetically similar when they are pronounced by an English-speaking public. It should be noted that the earlier mark consists of two syllables ‘u’ and ‘gli’, whereas the contested mark consists of three syllables, namely ‘e’, ‘glé’ and ‘fruit’. The Court considers that the Board of Appeal did not err in finding that the slight similarity resulting from the fact that both those signs contain the consonants ‘g’ and ‘l’, preceded and followed by vowels, is not sufficient to offset the phonetic differences between the signs, when each is considered in its entirety. In that regard, contrary to the applicant’s claim, it cannot be considered that the pronunciation of those vowels by the English-speaking public would give rise to a greater degree of phonetic similarity than that already acknowledged by the Board of Appeal in paragraph 23 of the contested decision.
38 In so far as the applicant reiterates its arguments alleging a lack of distinctiveness of the element ‘fruit’ in the contested mark and the use, in practice, of the earlier mark UGLI with the word ‘fruit’, they must be rejected on the grounds set out in paragraphs 34 and 35 above.
39 In those circumstances, it must be held that the Board of Appeal was correct to hold that, although the marks at issue were in some respects phonetically similar, they remained nevertheless dissimilar overall.
40 Concerning conceptual similarity, it suffices to note that the applicant does not dispute the Board of Appeal’s conclusion that there is no conceptual link between the marks at issue.
– The similarity between the marks EGLÉFRUIT and ‘UGLI Fruit – but the affliction is only skin deep’
41 The Board of Appeal held that, in the earlier figurative mark, the word element ‘ugli fruit’ was the dominant element. That being so, it held that, within that element, the word ‘ugli’ was the most important element, in so far as it appeared in larger characters and the word ‘fruit’ was descriptive of the goods at issue. The Board of Appeal also found that the figurative element representing a bulldog and a citrus fruit were prominantly positioned in the earlier mark, the representation of the dog having a high degree of distinctiveness in relation to the goods at issue, unlike the representation of the citrus fruit, considered in isolation.
42 Concerning visual similarity, it should be noted that the applicant does not dispute the Board of Appeal’s finding that there is no similarity. The lack of visual similarity is quite clear in the light of the high degree of distinctiveness of the representation of the bulldog and the large space taken up by the figurative element overall within the earlier figurative mark and the clear importance of the word ‘ugli’ in the word element ‘ugli fruit’ of the earlier figurative mark.
43 Concerning phonetic similarity, the Board of Appeal acknowledged the existence of a low degree of similarity between the earlier mark and the EGLÉFRUIT mark. The applicant denies however that only a minor similarity can be identified in the present case.
44 In that regard, the Court finds that, in the light of the identical nature of the descriptive elements ‘fruit’ of the signs at issue and the low degree of phonetic similarity of their elements ‘ugli’ and ‘eglé’, the Board of Appeal had good reason to hold that there was a certain degree of phonetic similarity between the signs at issue. That being so, it cannot be held, as the applicant would wish, that that similarity is very strong.
45 As was noted in paragraph 37 above, the Board of Appeal had good reason to hold that there was only a slight phonetic similarity between the elements ‘ugli’ and ‘eglé’ of the marks at issue, since the differences between those elements are still comprehensive even when the signs are pronounced by an English-speaking public. However, in the overall phonetic impression made by the marks, the elements ‘ugli’ and ‘eglé’ of the marks at issue have, in the perception of the public, a much greater weight than the elements ‘fruit’ of those marks, in so far as the elements ‘ugli’ and ‘eglé’, first, are distinctive and dominant and, secondly, are positioned at the beginning of the marks at issue. As regards the latter point, it is settled case-law that consumers generally pay greater attention to the beginning of a mark than to the end (Case T‑133/05 Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY‑PROP) [2006] ECR II-2737, paragraph 51, and Case T‑364/05 Saint-Gobain Pam v OHIM – Propamsa (PAM PLUVIAL) [2007] ECR II-757, paragraph 100).
46 Concerning conceptual similarity, the Board of Appeal held that there was none, a finding not in itself disputed by the applicant, which focuses its arguments above all on the consequences to be drawn from that lack of conceptual similarity with regard to the global assessment of the likelihood of confusion.
The global assessment of the likelihood of confusion
47 As regards the marks EGLÉFRUIT and UGLI, it follows from paragraphs 33 to 40 above that the Board of Appeal was correct to hold that those marks were visually different, were in no way conceptually linked and demonstrated only a low degree of phonetic similarity.
48 Since the only element of phonetic similarity likely to be identified is in any event weak, it must be held that, in view of the relevant public, namely consumers of everyday consumer goods, and despite the fact that the goods covered by the marks at issue are identical, the Board of Appeal did not err in holding that, in the present case, there is no likelihood of confusion either where the goods are purchased after being visually examined or where they are ordered orally by English-speaking consumers.
49 In that regard, the applicant’s claim that the relevant public has a particularly low level of attention cannot be accepted. According to settled case-law, although the average consumer of everyday consumer goods is less observant than a specialised or professional public, he is deemed to be reasonably well informed and reasonably observant and circumspect (Case T-346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II-4891, paragraph 30, and Case T-149/06 Castellani v OHIM – Markant Handels und Service (CASTELLANI) [2007] ECR II-4755, paragraph 44).
50 Concerning the EGLÉFRUIT mark and the figurative mark ‘UGLI Fruit – but the affliction is only skin deep’, it can also not be considered that the Board of Appeal made an error of assessment in holding that there was no likelihood of confusion. As is apparent from the Board of Appeal’s correct assessment of the similarity of the marks, there are very clear visual differences between them, in particular as a result of the distinctive and dominant figurative element of the earlier mark, representing a bulldog with a citrus fruit in front of it. Similarly, there is no conceptual link between the marks at issue. On the contrary, as the Board of Appeal noted, in so far as the word ‘ugli’ in the earlier mark is likely to be associated with the English word ‘ugly’ by the relevant public, there would appear even to be a conceptual difference.
51 In those circumstances, despite the fact that the goods covered by the marks at issue are identical, the degree of phonetic similarity established, which concerns the descriptive word elements ‘fruit’ and, to a small extent, the elements ‘eglé’ and ‘ugli’, does not, in the present case and of itself, support the finding that there is a likelihood of confusion on the part of consumers of everyday consumer goods, who, as was noted in paragraph 49 above, are deemed to be reasonably well informed and reasonably observant and circumspect.
52 In that connection, it should be noted that although, in general, it cannot be ruled out that the marks’ phonetic similarity alone could create a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94, the existence of such a likelihood must be established as part of a global assessment as regards the visual, conceptual and phonetic similarities between the signs at issue. Thus, the assessment of any phonetic similarity is but one of the relevant factors for the purpose of that global assessment. Therefore, it cannot be accepted that there is a likelihood of confusion each time that a certain phonetic similarity can be established between the marks at issue (Case C-206/04 P Mülhens v OHIM [2006] ECR I-2717, paragraphs 21 and 22).
53 In the present case, the Board of Appeal, without being challenged on this point by the applicant, held that the consumers at issue are faced with the marks covering goods in Classes 29 and 31 both visually, when they examine those goods on supermarket shelves, and phonetically, in so far as they are potentially liable to refer to those marks orally. Thus, there is no particular feature of the present case which allows greater weight to be given to phonetic similarity, such that the existence of a certain degree of similarity in that regard would suffice, in the context of a global assessment, to lead to the conclusion that there is a likelihood of confusion in the present case.
54 On the contrary, as OHIM submits, it is likely that visual contact with the marks predominates in respect of everyday consumer goods. In that context, it is necessary to take into consideration, in particular, the very clear visual differences which have been established.
55 In the light of all the foregoing, it must be held that the Board of Appeal did not make an error of assessment in finding that there was no likelihood of confusion between the word mark EGLÉFRUIT, on the one hand, and the earlier word mark UGLI and figurative mark ‘UGLI Fruit – but the affliction is only skin deep’, on the other.
56 Consequently, the single plea in law alleging infringement of Article 52(1)(a) of Regulation No 40/94, in conjunction with Article 8(1)(b) of Regulation No 40/94, must be rejected, and therefore the action as a whole must be dismissed.
Costs
57 Under Article 87(2) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
58 Since the applicant has been unsuccessful, it must be ordered to pay the costs in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action.
2. Orders Cabel Hall Citrus Ltd to pay the costs.
Delivered in open court in Luxembourg on 15 April 2010.
[Signatures]