JUDGMENT OF THE GENERAL COURT (Ninth Chamber)
14 June 2018 (*)
(EU trade mark — Opposition proceedings — International registration designating the European Union — Figurative mark LION’S HEAD global partners — Earlier EU word mark LION CAPITAL — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 (now Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑310/17,
Lion’s Head Global Partners LLP, established in London (United Kingdom), represented by R. Nöske, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Crespo Carrillo, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being
Lion Capital LLP, established in London (United Kingdom), represented by D. Rose and J. Warner, Solicitors,
ACTION brought against the decision of the Fourth Board of Appeal of EUIPO of 28 February 2017 (Case R 1477/2016‑4), relating to opposition proceedings between Lion Capital and Lion’s Head Global Partners,
THE GENERAL COURT (Ninth Chamber),
composed of S. Gervasoni, President, K. Kowalik-Bańczyk (Rapporteur) and C. Mac Eochaidh, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 15 May 2017,
having regard to the response of EUIPO lodged at the Court Registry on 15 September 2017,
having regard to the response of the intervener lodged at the Court Registry on 29 September 2017,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 23 December 2008, the applicant, Lion’s Head Global Partners LLP, designated the European Union for international registration No 997073 in respect of the following figurative mark:
2 That registration was notified to the European Union Intellectual Property Office (EUIPO) on 9 April 2009, pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).
3 The services in respect of which registration has been sought are in, inter alia, Class 36 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: ‘Insurance; financial affairs; monetary affairs; real estate affairs’.
4 The trade mark application was published in Community Trade Marks Bulletin No 19/2009 of 25 May 2009.
5 On 4 February 2010, the intervener, Lion Capital LLP, filed a notice of opposition to registration of the mark applied for in respect of all the services referred to in paragraph 3 above, pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001).
6 The opposition was based on, inter alia, the earlier EU word mark LION CAPITAL, registered on 16 March 2006 under number 4430096, covering, inter alia, the services in Class 36 referred to in paragraph 3 above.
7 The grounds relied on in support of the opposition were those laid down in Article 8(1)(b) and 8(5) of Regulation No 207/2009 (now Article 8(1)(b) and 8(5) of Regulation 2017/1001).
8 By decision of 10 June 2016, the Opposition Division of EUIPO upheld the opposition for the services in question on the basis of Article 8(1)(b) of Regulation No 207/2009.
9 On 10 August 2016, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
10 By decision of 28 February 2017 (‘the contested decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. More specifically, it found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, inter alia as a result of, first, the at least average degree of similarity between the earlier mark and the mark applied for and, secondly, the identity of the services covered by those marks.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– reject the opposition;
– order EUIPO to pay the costs.
12 EUIPO and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. More specifically, it criticises the Board of Appeal for finding that there is a likelihood of confusion, whereas, in its view, the marks at issue are not visually, phonetically or conceptually similar.
14 EUIPO and the intervener dispute the applicant’s arguments.
Preliminary observations
15 In accordance with Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier mark, the trade mark applied for is not to be registered if, because it is identical or similar to the earlier trade mark or because the goods or services covered by the trade marks are identical or similar, 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.
16 According to established case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to that same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the marks and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the marks and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
17 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant elements. 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 this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
18 For the purpose of assessing the distinctive character of an element of a mark, an assessment must be made of the greater or lesser capacity of that element to contribute to identifying the goods and services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods and services from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods and services for which that mark has been registered (see, to that effect, judgment of 3 September 2010, Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, EU:T:2010:347, paragraph 47 and the case-law cited).
19 Lastly, with regard to the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 35).
Similarity of the marks at issue
20 In the present case, the Board of Appeal found, first of all, that the relevant public is the public in the European Union, which consists both of the general public and of professionals. Next, it found that both the words ‘global partners’ and the figurative element of the mark applied for and the word ‘capital’ of the earlier mark are secondary in nature. It thus found, first, that there is an average degree of visual similarity between the marks at issue on the ground that the word ‘lion’ is both, on the one hand, the distinctive and dominant element of the earlier mark and, on the other, the first element of the dominant part of the mark applied for. Secondly, it found that there is a higher than average degree of phonetic similarity between the two marks in so far as, as regards the mark applied for, both the figurative element and the words ‘global partners’ would not, or would probably not, be pronounced by the relevant public, with the result that the marks at issue are distinguishable only by the word ‘capital’ in the earlier mark and by the word elements ‘’s’ and ‘head’ in the mark applied for. Thirdly, the Board of Appeal found that there is an average degree of conceptual similarity between the marks on the ground that they both make reference to, inter alia, a lion.
The distinctive and dominant elements of the marks at issue
21 In the first place, as regards the mark applied for, first, the applicant submits that the Board of Appeal should have made clear that none of the word elements ‘lion’s head’ is dominant in relation to the others in so far as those elements will be perceived by the relevant public as constituting a whole.
22 In that regard, suffice it to note that the Board of Appeal took the view that the word elements ‘lion’s head’, taken as a whole, were dominant, with the result that it did not distinguish, among those elements, that which was dominant in relation to the others. The applicant’s argument must therefore be rejected in so far as it is based on an incorrect reading of the contested decision.
23 Secondly, the applicant disputes, in essence, the Board of Appeal’s assessment that the word elements ‘lion’s head’ are dominant. More specifically, it submits that the figurative element of the mark applied for plays as important a role in the relevant public’s perception as do those word elements in so far as the relevant public will be surprised by the fact that the figurative element does not represent a lion.
24 In that regard, it should be borne in mind that, according to settled case‑law, where a trade mark is composed of verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (judgments of 9 September 2008, Honda Motor Europe v OHIM — Seat (MAGIC SEAT), T‑363/06, EU:T:2008:319, paragraph 30, and of 11 December 2014, Coca-Cola v OHIM — Mitico (Master), T‑480/12, EU:T:2014:1062, paragraph 49; see also, to that effect, judgment of 14 July 2005, Wassen International v OHIM — Stroschein Gesundkost (SELENIUM-ACE), T‑312/03, EU:T:2005:289, paragraph 37).
25 In the present case, however, it cannot be ruled out that the relevant public will not perceive immediately what the figurative element is supposed to represent, with the result that, having regard to the case-law cited in paragraph 24 above, solely the word elements of the mark applied for are likely to be used by the relevant public to refer to the services at issue. In those circumstances, it must be held that the word elements ‘lion’s head’ have a greater distinctive character than that of the figurative element, with the result that those word elements will be perceived by the relevant public as being more important in the overall impression produced by the mark applied for.
26 Thirdly, it must be noted that, as regards the words ‘global partners’, on the one hand, according to settled case-law, the word ‘partner’, written in the plural or the singular, has descriptive character in so far as it is often used to describe relationships of association or partnership by suggesting positive connotations of reliability and continuity (judgments of 8 July 2004, MLP Finanzdienstleistungen v OHIM (bestpartner), T‑270/02, EU:T:2004:226, paragraph 23, and of 27 September 2005, Cargo Partner v OHIM (CARGO PARTNER), T‑123/04, EU:T:2005:340, paragraph 52; see also, to that effect, judgment of 11 September 2014, Continental Wind Partners v OHIM — Continental Reifen Deutschland (CONTINENTAL WIND PARTNERS), T‑185/13, not published, EU:T:2014:769, paragraph 52), particularly in the case of the services referred to in paragraph 3 above (see, to that effect, judgment of 22 September 2016, Grupo de originación y análisis v EUIPO — Bankinter (BK PARTNERS), T‑228/15, not published, EU:T:2016:530, paragraph 49). On the other hand, the word ‘global’, as part of the basic vocabulary of English commonly used in trade to indicate that a product or service is available in several countries, will also be understood by the majority of the relevant public as being descriptive of the services at issue.
27 In those circumstances, it must be held that the Board of Appeal was fully entitled to find that the word elements ‘lion’s head’, taking account of their distinctive character, their relatively large size and their central position in the mark applied for, have a dominant character.
28 In the second place, as regards the earlier mark, it should be noted, as the Board of Appeal and the applicant correctly observed, that the word ‘lion’ constitutes the sole distinctive element of the earlier mark, having regard to the descriptive character of the word ‘capital’, which may designate the services at issue or one of their characteristics in several languages, including English, Spanish, French and Portuguese.
29 It follows from the foregoing that the Board of Appeal was fully entitled to find that the word ‘lion’ constitutes, on the one hand, the first element of the dominant part of the mark applied for and, on the other hand, the sole distinctive element of the earlier mark.
Visual similarity
30 With regard to the earlier mark, the applicant submits in essence that, in so far as, on the one hand, the word ‘lion’ is dominant and, on the other, the word ‘capital’ is descriptive, the word ‘lion’ alone must be taken into account for the purpose of assessing visual similarity. By contrast, with regard to the mark applied for, it claims that, because of the word element ‘’s’, the word elements ‘lion’s head’ will be perceived by the relevant public as constituting a whole. Thus, the applicant submits that the whole consisting of the word elements ‘lion’s head’ in the mark applied for may be distinguished from the word ‘lion’ in the earlier mark by reason of, first, its greater length and, secondly, the fact that it consists of several words. In those circumstances, and taking account of the presence of the figurative element in the mark applied for, the applicant submits that the marks at issue are visually dissimilar.
31 In that regard, it should, in the first place, be noted, as observed by EUIPO, that the applicant’s suggestion that the word ‘capital’ in the earlier mark be omitted for the purpose of assessing visual similarity would merely make the marks at issue more similar. The earlier mark would then be wholly included in the mark applied for. According to the case‑law, that fact alone is liable to create both a strong visual and phonetic similarity between the marks at issue (judgment of 12 December 2017, For Tune v EUIPO — Simplicity trade (opus AETERNATUM), T‑815/16, not published, EU:T:2017:888, paragraph 53; see also, to that effect, judgments of 8 March 2005, Leder & Schuh v OHIM — Schuhpark Fascies (JELLO SCHUHPARK), T‑32/03, not published, EU:T:2005:82, paragraph 39, and of 29 January 2013, Fon Wireless v OHIM — nfon (nfon), T‑283/11, not published, EU:T:2013:41, paragraph 48).
32 In the second place, it must be held, in the light of the considerations set out in paragraph 29 above and particularly taking into account the fact that consumers generally pay greater attention to the beginning of a mark than to the end and that the word placed at the beginning of the sign is likely to have a greater impact than the rest of the sign (see judgment of 11 May 2010, Wessang v OHIM — Greinwald (star foods), T‑492/08, not published, EU:T:2010:186, paragraph 46 and the case-law cited; judgment of 15 July 2015, The Smiley Company v OHIM — The Swatch Group Management Services (HAPPY TIME), T‑352/14, not published, EU:T:2015:491, paragraph 36), that the Board of Appeal was fully entitled to conclude, on the basis of the overall impression created by the marks at issue, that they were visually similar.
33 That conclusion is not called into question by the applicant’s assertion that the emphasis in the pronunciation of the mark applied for is placed on the word ‘head’ and not on the word ‘lion’. First, as correctly observed by EUIPO, the applicant is inconsistent in this regard in so far as it also claims that all the words in the mark applied for are ‘equally important elements’ and that ‘they are elements of equal weight within a multi-word mark’. Secondly, the fact that the pronunciation of the word ‘head’ is emphasised, which, in any event, cannot be substantiated for the whole of the relevant public, is not capable of altering the assessment of visual similarity.
34 Likewise, the applicant’s argument that the case-law cited in paragraph 32 above is not applicable in the present case, in so far as the word elements ‘lion’s head’ will be perceived by the relevant public as constituting a whole, must be rejected.
35 First, it must, admittedly, be noted that the argument according to which consumers generally remember the beginning of a mark rather than the end cannot hold in all cases and does not, in any event, cast doubt on the principle that the assessment of the similarity of given marks must take account of the overall impression created by those marks, since the average consumer normally perceives a trade mark as a whole and does not analyse its different aspects (see, to that effect, judgment of 9 September 2008, MAGIC SEAT, T‑363/06, EU:T:2008:319, paragraph 38 and the case-law cited). In the present case, however, it has not been shown that the word elements ‘’s’ and ‘head’ in the mark applied for should be regarded as the more distinctive, or, consequently, that the relevant public will attach greater importance to them. This cannot therefore neutralise the existence of a certain degree of similarity caused by the identity of the first part of the marks in the overall impression created by them (see, to that effect, judgment of 30 April 2014, Beyond Retro v OHIM — S&K Garments (BEYOND VINTAGE), T‑170/12, not published, EU:T:2014:238, paragraph 57).
36 Secondly, only the English-speaking part of the relevant public will perceive the meaning of the word element ‘’s’ in the mark applied for, with the result that the applicant’s argument cannot, in any event, undermine the finding that the marks at issue are visually similar for a large part of the relevant public.
37 Lastly, as regards the applicant’s argument that the case-law cited in paragraph 32 above is not conclusive in the present case in so far as the marks at issue are too different, suffice it to note that that case-law defines one of the criteria for assessing the similarity of the marks at issue, with the result that it is not possible to conclude, initially, that those marks are not sufficiently similar, in order to assess, subsequently, whether or not it is appropriate to apply that case-law.
Phonetic similarity
38 The applicant submits that the marks at issue are not phonetically similar on the ground that word elements ‘lion’s head’ of the mark applied for consist of three syllables whereas, on the one hand, the dominant element of the earlier mark consists of two syllables and, on the other, the earlier mark as a whole consists of five syllables. The applicant also claims that the word elements ‘lion’s head’ will be perceived by the relevant public as constituting a whole and that the word elements ‘’s’ and ‘head’ are emphasised.
39 In that regard, it should, first, be recalled, as noted in paragraph 33 above, on the one hand, that the applicant itself undermines the argument that the word elements ‘’s’ and ‘head’ are emphasised and, on the other, that such an argument cannot, in any event, be accepted for the whole of the relevant public. Secondly, it should be noted that the fact that the marks at issue do not have exactly the same number of syllables does not in itself exclude the possibility that those marks may be phonetically similar. Furthermore, it should also be noted that the applicant does not dispute the Board of Appeal’s assessment that, in view of their descriptive character, their reduced size and their position in the lower part of the mark applied for, the words ‘global partners’ will probably not be pronounced by the relevant public.
40 In those circumstances, and in the light of the factors and case-law recalled respectively in paragraphs 29 and 32 above, it must be held that the Board of Appeal was fully entitled to find that the marks at issue are phonetically similar.
Conceptual similarity
41 The applicant submits that the marks at issue are not conceptually similar in so far as the earlier mark refers to qualities generally recognised in lions which could be attributed to the services described by the word ‘capital’, thereby conveying a laudatory message about the services marketed by the intervener, whereas the mark applied for will be perceived as referring only to a lion’s head.
42 In that regard, suffice it to note that the fact that the earlier mark refers to qualities generally recognised in lions permits the inference that the earlier mark refers to lions. In so far as the mark applied for refers to a lion’s head, it cannot be disputed that the marks at issue are conceptually similar.
43 That conclusion cannot be called into question by the applicant’s argument that the Board of Appeal incorrectly extended the protection conferred by the earlier mark to all body parts of a lion. It should be noted that the earlier mark refers to a lion in its entirety, in that it includes the head and the other body parts of the animal. It follows that the Board of Appeal did not confer on the intervener’s exclusive right a broader scope than that conferred by the earlier mark.
44 Finally, it should be borne in mind, as stated in paragraph 27 above, that the word elements ‘lion’s head’ in the mark applied for have a dominant character, with the result that the presence of the figurative element and the words ‘global partners’ in that mark does not make it possible to conclude that there is no similarity whatsoever between that mark and the earlier mark.
45 Consequently, it follows from the foregoing that the Board of Appeal was fully entitled to find that the marks at issue have, in essence, an at least average degree of similarity.
46 Therefore, in so far as the definition of the relevant public, the level of attention of that public, the comparison of the services at issue and the other relevant factors for the purpose of assessing the likelihood of confusion are not disputed and none of the information in the file makes it possible to cast doubt on them, it must be held that the applicant errs in submitting that the likelihood of confusion is not established in the present case.
47 Consequently, the single plea in law put forward by the applicant must be rejected as unfounded and the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s second head of claim.
Costs
48 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by EUIPO and by the intervener, in accordance with the forms of order sought by those parties.
On those grounds,
THE GENERAL COURT (Ninth Chamber)
hereby:
1. Dismisses the action;
2. Orders Lion’s Head Global Partners LLP to pay the costs.
Gervasoni | Kowalik-Bańczyk | Mac Eochaidh |
Delivered in open court in Luxembourg on 14 June 2018.