JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
16 January 2014 (*)
(Community trade mark – Opposition proceedings – Application for the Community figurative mark Sun Park Holidays – Earlier Community figurative mark Sunparks Holiday Parks – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑383/12,
Ferienhäuser zum See GmbH, established in Marienmünster (Germany), represented by M. Boden and I. Höfener, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Pohlmann, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being,
Sunparks Groep NV, established in Den Haan (Belgium),
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 25 June 2012 (Case R 1928/2011‑4), relating to opposition proceedings between Sunparks Groep NV and Ferienhäuser zum See GmbH,
THE GENERAL COURT (Eighth Chamber),
composed of D. Gratsias, President, M. Kancheva (Rapporteur) and C. Wetter, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 24 August 2012,
having regard to the response lodged at the Court Registry on 13 December 2012,
having regard to the reply lodged at the Court Registry on 28 February 2013,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge‑Rapporteur to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court,
gives the following
Judgment
Background to the dispute
1 On 4 May 2010, the applicant filed an application for registration of a Community trade mark with 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 in blue, yellow and black:
3 The services in respect of which registration was sought are in Classes 39 and 43 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 39: Transport of travellers; travel reservation services; Travel booking and arrangement; escorting of travellers; arranging travel tours; rental of mobile homes, caravans.
– Class 43: Providing campsite facilities; holiday camps, services for providing food and drink and temporary accommodation, rental of transportable buildings (mobile homes) and tents; rental of bed linen.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 2010/122 of 6 July 2010.
5 On 7 September 2010, Sunparks Groep NV (‘Sunparks Groep’) filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 against registration of the mark applied for in respect of the services referred to in paragraph 3 above.
6 The opposition was based, inter alia, on the following earlier Community figurative mark in blue and green, which was registered on 21 January 2009 under the number 6852453:
7 The services in respect of which the earlier Community trade mark was registered are in Classes 39, 41 and 43 and correspond, for each of those classes, to the following description:
– Class 39: Arranging and booking of travel, tours, excursions and cruises; transport of passengers, animals and luggage by land, air or water; escorting of travellers; booking of seats for the transportation of people and luggage; communication concerning the transport of people and luggage, transport fares, transport timetables and methods of transport; parking place rental; transport rental; transfer services.
– Class 41: Education, tuition, providing of training and courses; sports courses; entertainment; presentation and organisation of musical programmes, shows and sporting events; organising showings of movies; recreation centre and holiday centre services (entertainment).
– Class 43: Providing of food and drink; temporary accommodation; hotel and holiday centre services (accommodation).
8 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009.
9 On 25 July 2011, the Opposition Division upheld the opposition based on the earlier Community trade mark in respect of all the services covered by the trade mark application.
10 On 20 September 2011, the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
11 On 5 December 2011, the Registry of the Boards of Appeal of OHIM informed the applicant that it had not filed the statement of grounds relating to the appeal within the period prescribed for that purpose.
12 On 7 December 2011, the applicant filed the statement of grounds for the appeal at the Registry of the Boards of Appeal together with an application for restitutio in integrum in accordance with Article 81 of Regulation No 207/2009.
13 By decision of 25 June 2012, the Fourth Board of Appeal of OHIM granted the application for restitutio in integrum, but upheld the Opposition Division’s decision and therefore dismissed the applicant’s appeal (‘the contested decision’). In particular, it found that, in view of the identity of the services covered by the marks at issue and of the fact that the marks were highly similar visually and conceptually and relatively similar phonetically, there was a likelihood of confusion between those marks on the part of the relevant public within the meaning of Article 8(1)(b) of Regulation No 207/2009, notwithstanding the slightly reduced distinctive character of the earlier mark.
Forms of order sought
14 The applicant claims that the Court should:
– ‘annul the [contested decision] and the decision of the Opposition Division of 25 July 2011’;
– order OHIM to pay the costs.
15 OHIM contends that the Court should:
– dismiss the action in its entirety;
– order the applicant to pay the costs.
Law
Admissibility
16 By its first head of claim, the applicant asks the Court to annul the decision of the Opposition Division of 25 July 2011 as well as the contested decision.
17 OHIM submits that, pursuant to Article 65(1) of Regulation No 207/2009, actions may be brought before the Courts of the European Union only against decisions of the Boards of Appeal. Consequently, it submits that the applicant’s first head of claim is inadmissible is so far as it seeks annulment of the Opposition Division’s decision of 25 July 2011.
18 However, under Article 65(3) of Regulation No 207/2009, the Courts of the European Union have jurisdiction to annul or to alter the decisions of the Boards of Appeal. In that regard, an application for the Court to adopt the decision which, according to one party, the Board of Appeal should have taken is within the scope of the power to alter decisions of the Board of Appeal provided for under Article 65(3) of Regulation No 207/2009 (see, to that effect, Case T‑363/04 Koipe v OHIM – Aceites del Sur (La Española) [2007] ECR II‑3355, paragraphs 29 and 30; judgment of 11 February 2009 in Case T‑413/07 Bayern Innovativ v OHIM – Life Sciences Partners Perstock (LifeScience), not published in the ECR, paragraphs 14 to 16; and judgment of 9 September 2011 in Case T‑274/09 Deutsche Bahn v OHIM – DSB (IC4), not published in the ECR, paragraph 22).
19 Furthermore, it is clear from Article 64(1) of Regulation No 207/2009, in force at the date of adoption of the contested decision, that the Board of Appeal had the power to annul the decision of the Opposition Division if it considered the appeal to be well founded. Such annulment therefore falls within the measures which may be taken by the General Court in the exercise of its power to alter decisions (see, to that effect, Case T‑334/01 MFE Marienfelde v OHIM – Vétoquinol (HIPOVITON) [2004] ECR II‑2787, paragraph 19 and the case-law cited, and IC4, paragraph 23).
20 It follows that the plea of inadmissibility put forward by OHIM in relation to the applicant’s claim for annulment of the Opposition Division’s decision of 25 July 2011 must be rejected.
Substance
21 The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
22 The applicant submits, in essence, that the word element ‘sunparks’ in the earlier mark and the word elements ‘sun’, ‘park’ and ‘holidays’ in the mark applied for are not distinctive, but are in fact descriptive of holiday and recreational services. According to the applicant, those word elements do not therefore constitute the dominant elements of the signs at issue and those signs must be assessed in their entirety. Consequently, a comparison of those signs leads to the conclusion that they are not visually and conceptually similar and that there is only a certain phonetic similarity between them. In those circumstances, and in the light of the earlier mark’s lack of a highly distinctive character, there is no likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009.
23 The Court points out that Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property.
24 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or 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 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).
25 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
26 It is in the light of those considerations that it must be examined whether the Board of Appeal was right to find that there was a likelihood of confusion between the earlier mark and the mark applied for.
The relevant public
27 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 Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).
28 In the present case, the Board of Appeal found in paragraph 28 of the contested decision that the relevant public consisted of the general public in Germany.
29 The applicant submits that the relevant public is the average German consumer, who is very attentive on the ground that the majority of German consumers pay very great attention to their holiday preparations and to the related services, which is shown by their widespread use of the Internet to inform themselves in detail about travel opportunities as well as by the increase in the cost of the holidays.
30 OHIM disputes the applicant’s arguments.
31 In that regard, the Court points out that the earlier mark is a Community trade mark, the protection of which extends to the territory of all the Member States.
32 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 at issue by the consumer of the goods or services in question in that territory. However, it should be noted that, in order for registration of a Community trade mark to be refused, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, 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).
33 Furthermore, the Court points out that the services ‘[t]ransport of travellers; travel reservation services; Travel booking and arrangement; escorting of travellers; arranging travel tours; rental of mobile homes, caravans’ in Class 39 and the services ‘[p]roviding campsite facilities; holiday camps, services for providing food and drink and temporary accommodation, rental of transportable buildings (mobile homes) and tents; rental of bed linen’ in Class 43, in respect of which registration of the mark applied for has been sought, are intended for the general public.
34 Consequently, the Board of Appeal did not err in finding that the relevant public is, in the present case, the general public in Germany, which must be construed as the average German consumer, who is reasonably well informed and reasonably observant and circumspect.
35 That finding cannot be called into question by the applicant’s claim that, in the present case, the average German consumer is particularly attentive with regard to the services covered by the disputed mark.
36 It is clear that that argument is based solely on studies relating to the behaviour of German consumers carried out by the Forschungsgemeinschaft Urlaub und Reisen (Holiday and Travel Research Association) which were provided for the first time in the reply. Such evidence must be regarded as belated and, in the absence of any justification in that regard, be rejected as inadmissible in accordance with Article 48(1) of the Rules of Procedure.
37 Moreover, it must be pointed out that the documents on which the applicant relies in order to dispute the definition of the relevant public adopted by the Opposition Division and reiterated by the Board of Appeal in the contested decision had not previously been submitted before the Board of Appeal.
38 In that regard, the Court observes that, according to settled case-law, the purpose of an action before it is to review the legality of decisions of the Boards of Appeal within the meaning of Article 65 of Regulation No 207/2009 and that, in proceedings for annulment, the legality of the contested measure must be assessed on the basis of the elements of fact and of law existing at the time when the measure was adopted (Case T‑164/03 Ampafrance v OHIM – Johnson & Johnson (monBeBé) [2005] ECR II‑1401, paragraph 29, and Case T‑336/03 Éditions Albert René v OHIM – Orange (MOBILIX) [2005] ECR II‑4667, paragraph 16). It is thus not the Court’s function to review the facts in the light of evidence which has been adduced for the first time before it (Case T‑169/03 Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI) [2005] ECR II‑685, paragraphs 24 and 25). To admit such documents would be contrary to Article 135(4) of the Rules of Procedure of the General Court, which states that the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal.
The comparison of the services
39 The Board of Appeal found, in paragraph 26 of the contested decision, that the services covered by the disputed mark and those covered by the earlier mark were identical.
40 The assessment, which has not been disputed by the applicant, must be upheld.
The comparison of the signs
41 According to settled case-law, two marks are similar, for the purposes of Article 8(1)(b) of Regulation No 207/2009 when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see Case T‑286/02 Oriental Kitchen v OHIM – Mou Dybfrost (KIAP MOU) [2003] ECR II‑4953, paragraph 38 and the case-law cited). As the case-law indicates, the visual, phonetic and conceptual aspects are relevant (see Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 30 and the case-law cited).
42 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, 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 appreciation of such likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).
43 Accordingly, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see OHIM v Shaker, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (OHIM v Shaker, paragraph 42, and judgment of 20 September 2007 in Case C‑193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public keep in their minds, so that all the other components are negligible in the overall impression created by that mark (Nestlé v OHIM, paragraph 43).
– The distinctive character of the earlier mark
44 In paragraph 35 of the contested decision, the Board of Appeal stated that the inherent distinctive character of the earlier mark was not limited to its graphic impact, namely to its colour, because the word ‘sunparks’ does not exist. However, according to the Board of Appeal, the word elements ‘sun’, ‘park’ and ‘holiday’ in the earlier mark were, to varying degrees, weakly distinctive in respect of the services covered by the earlier mark and the disputed mark, all of which concern the field of travel and holiday camps. The Board of Appeal thus found that the word element ‘sun’, taken alone, pointed to desirable characteristics of holidays in that consumers seek to spend their holidays in sunny weather although they know that service providers cannot guarantee such weather. It also pointed out that some service providers compensate for that uncertainty with money-back guarantees or the right to cancel the contract in the event of excessive rainfall during the holiday. It found, however, that, in any event, although the inherent distinctive character of the earlier mark was slightly reduced, that mark was not at all descriptive.
45 The applicant submits that the combination created by the word elements ‘sun’ and ‘park’ in the earlier mark is not unusual and does not have a meaning of its own which is capable of distinguishing, in the minds of members of the relevant public, the services offered by the opposing party from those with a different commercial origin. It states that those word elements are part of the basic English vocabulary commonly understood by the relevant public in Europe, even in Germany, and have a strong, positive association with holiday and recreational services. Many fun parks, holiday resorts as well as many hotels therefore use the word element ‘park’ in their name, as a result of which the public associates that element with holiday and recreational services. Similarly, the public associates the word element ‘sun’ with holidays, fun and having a good time and therefore with holiday and recreational services. According to the applicant, the fact that the word ‘sunparks’ does not appear in any dictionaries is not capable of calling in question the absence of distinctive character of that word. The applicant submits that, inasmuch as the word elements ‘sun’ and ‘park’ are common to the signs at issue, the Board of Appeal should, when comparing those signs, have given precedence to their figurative elements.
46 OHIM disputes the applicant’s arguments.
47 The Court points out that the fact that a mark has been registered means that that mark has a minimum of inherent distinctiveness, since Article 7(1)(b) of Regulation No 207/2009 precludes registration of a mark which is devoid of distinctive character. Therefore, the registration of the earlier mark signifies that that mark has a minimum degree of distinctiveness. However, this case concerns only an opposition and the minimum degree of distinctiveness of the earlier mark is not at issue. As is apparent from Articles 41 and 42 of Regulation No 207/2009, there is no need to examine the absolute grounds for refusal referred to in Article 7 of that regulation in the context of opposition proceedings. The grounds on which an opposition may be based, as laid down in Article 41(1) of Regulation No 207/2009, are solely the relative grounds for refusal in Article 8 of that regulation. Those are the terms on which OHIM is required to give a decision on the opposition under Article 42(5) of Regulation No 207/2009. If the applicant considered that the earlier Community trade mark had been registered contrary to the provisions of Article 7 of Regulation No 207/2009, it should have submitted an application for a declaration of invalidity pursuant to Article 52 of that regulation (judgment of 14 May 2013 in Case T‑393/11 Masottina v OHIM – Bodegas Cooperativas de Alicante (CA’ MARINA), not published in the ECR, paragraph 52).
48 In the present case, the Board of Appeal found, as regards the earlier mark, that the figurative elements and the colours used were of secondary importance (see paragraph 30 of the contested decision). Contrary to the arguments put forward by the applicant, that assessment must be upheld. It follows that the word elements of that mark, namely the elements ‘sunparks’, ‘holiday’ and ‘parks’, must be regarded as the most important elements in that mark. In those circumstances, it must be held that, in the light of the case-law referred to in paragraph 47 above, the Board of Appeal could not deny that those word elements had any distinctive character. In view of the fact that the word elements in question are the main elements of the earlier mark, such an approach would be tantamount to denying that those word elements have any distinctive character, something which the Board of Appeal could not do.
– The visual similarity
49 In paragraph 29 of the contested decision, the Board of Appeal took the view, as regards the mark applied for, that the slogan ‘Die wohl kinderfreundlichste Art Campingurlaub zu machen!’ was, first, written in very small letters and, secondly, both descriptive and laudatory, with the result that it would not hold the consumer’s attention. Similarly, it found that the figurative element representing half of a sun was primarily decorative and emphasised the semantic content of the word element ‘sun’. Furthermore, it found that the colour of the letters in the word elements, as well as their font, were standard and not particularly novel. According to the Board of Appeal, the word elements ‘sun’, ‘park’ and ‘holidays’ thus constituted the dominant elements of the disputed mark.
50 As regards the earlier mark, the Board of Appeal found, in paragraph 30 of the contested decision, that the colour and font used were of secondary importance and that, as the figurative element representing two leaves below the letters ‘n’ and ‘p’ was primarily decorative, it would not hold the attention of consumers, given the overall impression created by that mark. It also pointed out that the word elements ‘sunparks’ and ‘holiday parks’ are written on two different lines and that the second line is clearly smaller than the first.
51 In paragraph 31 of the contested decision, the Board of Appeal then found, as regards the visual comparison of the signs at issue, that each of the word elements making up the dominant element of the disputed mark was contained in the earlier mark, with the word element ‘park(s)’ even appearing twice in the latter mark, and that each of the signs at issue began with the word element ‘sun park’, with or without a space. It concluded that there was a high degree of similarity between the signs at issue notwithstanding the difference connected with the use of the plural ‘s’ at the end of the word elements ‘park’ and ‘holiday’, which did not affect the semantic content of those elements.
52 The applicant maintains that, as the word elements ‘sun’, ‘park’ and ‘holidays’ have no distinctive character, it is necessary, within the context of the visual comparison of the signs at issue, to take the earlier mark into account in its entirety, that is to say, the complex combination between its word and figurative elements.
53 The applicant submits, first, that, in accordance with the case-law of the Court, the relevant public will not regard a descriptive element forming part of a composite mark, such as the word element ‘sunparks’, as the distinctive and dominant element of the overall impression conveyed by that mark. Furthermore, the sole fact that the earlier word mark has been registered as a national or international trade mark does not prevent that mark from being largely descriptive or from having only a weak inherent distinctive character as regards the services which it covers.
54 Secondly, each of the signs at issue has a specific graphic configuration which differs completely from that of the other with regard to the arrangement of the word and figurative elements and the size and typeface of the word elements. Therefore, according to the applicant, although those signs have the word element ‘sunparks’ or the word element ‘sun park’ in common, they have visual differences which are not inconsiderable with the result that the global impression which they create is different.
55 OHIM disputes the applicant’s arguments.
56 In that regard, the Court points out that the weak distinctive character of an element of a composite mark does not necessarily imply that that element cannot constitute a dominant element since – because, in particular, of its position in the sign or its size – it may make an impression on consumers and be remembered by them (see Case T‑134/06 Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM) [2007] ECR II‑5213, paragraph 54 and the case-law cited).
57 In the present case, it must be pointed out that the earlier mark consists of the word element ‘sunparks’ written in blue in a standard font, with the first letter in upper case and the other letters in lower case, and of the smaller word elements ‘holiday’ and ‘parks’ written in green in a standard font of which the first letter is in upper case and the other letters are in lower case. The word element ‘sunparks’ is situated above the word elements ‘holiday’ and ‘parks’. The earlier mark also includes a figurative element representing two feathers or two drops of water, one in blue and the other in green, situated under the letters ‘n’ and ‘p’ of the word element ‘sunparks’ and before the word element ‘holiday’.
58 Having regard to, first, the smaller size and lower position of the word elements ‘holiday’ and ‘parks’ and, secondly, to the negligible nature of the figurative element, the word element ‘sunparks’ is the dominant element of the earlier mark.
59 The mark applied for consists of the word elements ‘sun’, ‘park’ and ‘holidays’ written in black on the same line in a slightly stylised font, the first letter of each of those elements being in upper case and the other letters being in lower case. Those word elements are preceded by a figurative element representing half of a sun in yellow and waves in blue. The slogan ‘Die wohl kinderfreundlichste Art Campingurlaub zu machen!’, written in black in a stylised font which is considerably smaller in size than that of the word elements ‘sun’, ‘park’ and ‘holidays’, appears on a second line.
60 In view of the small size of the figurative element and of the slogan ‘Die wohl kinderfreundlichste Art Campingurlaub zu machen!’ compared with that of the word elements ‘sun’, ‘park’ and ‘holidays’, which are situated in the centre of the sign, the latter constitute the dominant element of the mark applied for.
61 It must also be pointed out that the dominant element of the mark applied for, ‘sun park holidays’, begins with the words ‘sun’ and ‘park’, which will be perceived by the relevant public as visually similar to the dominant element of the earlier mark, ‘sunparks’.
62 Consequently, the Board of Appeal was right to find that there is a high degree of visual similarity between the signs at issue.
– The phonetic similarity
63 In paragraph 32 of the contested decision, the Board of Appeal found that the signs at issue were phonetically similar to an average degree.
64 The applicant has not disputed that assessment.
– The conceptual similarity
65 The Board of Appeal found in paragraph 33 of the contested decision that, conceptually, the signs at issue were highly similar. It took the view that each of the word elements ‘sun’, ‘park’ and ‘holiday’ in the earlier mark represented a concept and that the English meaning of those word elements would be easily understood by average German consumers. It also stated that each of those word elements appears in the earlier mark, where the repetition of the word ‘parks’ only reinforces the common concept contained in that mark. It found that only the lack of meaning of the expression ‘sun park’ in English prevented the signs at issue from being regarded as conceptually identical and that, in any event, both signs played with the meaning of the words ‘sun’, ‘park’ and ‘holiday’ as such.
66 The applicant does not dispute the fact that the signs at issue play with the meaning of the word elements ‘sun’, ‘park(s)’ and ‘holiday(s)’. However, it maintains that those word elements are descriptive and that each of those signs has a very unique graphic configuration which differs from that of the other. Furthermore, it submits that the mark applied for also contains the additional slogan ‘Die wohl kinderfreundlichste Art Campingurlaub zu machen!’, which suggests an explicitly child-friendly type of holiday particularly aimed at families with children. The additional slogan and its message make the mark applied for conceptually richer than the earlier mark.
67 OHIM disputes the applicant’s arguments.
68 In that regard, the Court points out that the applicant does not dispute that the signs at issue both play with the concepts contained in the word elements, ‘sun’, ‘park(s)’ and ‘holiday(s)’, which will be understood without difficulty by the relevant German-speaking public as referring to the ideas of sunny holidays and of leisure or holiday parks.
69 Contrary to what the applicant maintains, the Court takes the view that the slogan ‘Die wohl kinderfreundlichste Art Campingurlaub zu machen!’ in the mark applied for is not capable of calling that conclusion into question inasmuch as, first, it will generally be overlooked by the relevant public on account of its smallness and, secondly, it simply refers to the idea of spending the best family holiday possible on a camping site.
70 It follows that the Board of Appeal did not err in finding in the present case that there was a high degree of conceptual similarity between the signs at issue.
The likelihood of confusion
71 According to settled case-law, a global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and VENADO with frame and Others, paragraph 74).
72 In paragraph 40 of the contested decision, the Board of Appeal found that, in view of the identity of the services at issue, the degree of similarity of the marks at issue was high enough to cause a likelihood of confusion as regards the commercial origin of those services, in particular because, unless an enhanced degree of attention was paid to the marks at issue, the differences between the word elements in each of them would be overlooked. According to the Board of Appeal, it was likely, at first sight, that the public in Germany would perceive the marks at issue as having the same commercial origin, notwithstanding the slightly reduced distinctiveness of the earlier mark.
73 The applicant submits that the distinctive character of the earlier mark must be taken into account in the global assessment of the likelihood of confusion. According to the applicant, the Board of Appeal erred in finding that the distinctive and dominant element of the earlier mark is the element ‘sunparks’. That would be tantamount to allowing descriptive word elements, which are not eligible for protection, to become eligible for registration by using the back door of a composite mark and a random selection of similar elements.
74 According to the applicant, in view of the fact that the services covered by the marks in question are identical, that the signs in question are neither visually nor conceptually similar, but that there is a certain phonetic similarity between them, and, lastly, that the earlier mark does not have a highly distinctive character, the degree of similarity between the marks in question is not so great as to justify a finding that there is a likelihood of confusion between them for an average European, and, in particular, German, consumer who is very attentive and well informed.
75 OHIM disputes the applicant’s arguments.
76 In that regards, the Court points out that the finding of a weak distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see PAGESJAUNES.COM, paragraph 70 and the case-law cited).
77 In the present case, in view of, first, the high degree of conceptual and visual similarity and the average degree of phonetic similarity between the signs at issue and, secondly, the identity of the services at issue, which have been established above, the Board of Appeal was right to find that there was a likelihood of confusion between the earlier mark and the mark applied for in respect of the services at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009.
78 It follows that the single plea in law on which the action is based is unfounded and that the action must therefore be dismissed in its entirety.
Costs
79 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.
80 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 (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders the applicant to pay the costs.
Delivered in open court in Luxembourg on 16 January 2014.
[Signatures]