JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
12 September 2012 (*)
(Community trade mark – Opposition proceedings – International registration designating the European Community – Application for the Community figurative mark duschy – Earlier Community figurative mark DUSCHO Harmony – Relative ground for refusal – Absence of likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 – Obligation to state the reasons on which the decision is based – Articles 75 and 76 of Regulation No 207/2009)
In Case T‑295/11,
Duscholux Ibérica, SA, established in Barcelona (Spain), represented by J. Carbonnel Callicó, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Duschprodukter i Skandinavien AB, established in Hisings Backa (Sweden), represented by M. Jonson, lawyer,
ACTION brought against the decision of the First Board of Appeal of OHIM of 21 March 2011 (Case R 662/2010-1), relating to opposition proceedings between Duscholux Ibérica, SA and Duschprodukter i Skandinavien AB,
THE GENERAL COURT (Fifth Chamber),
composed of S. Papasavvas, President (Rapporteur), V. Vadapalas and K. O’Higgins, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 9 June 2011,
having regard to the response of OHIM lodged at the Registry on 29 September 2011,
having regard to the response of the intervener lodged at the Registry on 16 September 2011,
having regard to the decision of 9 November 2011 refusing to allow the submission of a reply,
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 Court,
gives the following
Judgment
Background to the dispute
1 On 25 May 2007, the intervener, Duschprodukter i Skandinavien AB, obtained from the World Intellectual Property Organisation (WIPO) the international registration W 927073 designating the European Community (‘the international registration’ or ‘the mark applied for’) for the following figurative sign:
2 The goods in respect of which registration was obtained are in Classes 11 and 20 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, for each of those classes, to the following description:
– Class 11: ‘Shower cabins; showers; shower panels, shower hoses, shower nozzles, hand showers, toilet seats’;
– Class 20: ‘Furniture, shelves, mirrors, shower curtain rods, rings, hooks’.
3 On 19 July 2003, the international registration was notified to 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)).
4 The particulars of the international registration provided for in Article 147(1) of Regulation No 40/94 (now Article 152(1) of Regulation No 207/2009) were published in Community Trade Marks Bulletin No 2007/38 of 30 July 2007.
5 At the end of the examination as to absolute grounds for refusal provided for in Article 149(1) of Regulation No 40/94 (now Article 154(1) of Regulation No 207/2009), OHIM granted the protection sought.
6 On 30 October 2007 the applicant, Duscholux Ibérica SA, filed a notice of opposition pursuant to Article 151 of Regulation No 40/94 (now Article 156 of Regulation No 207/2009) against registration of the mark applied for in respect of the goods referred to in paragraph 2 above.
7 The opposition was based on the earlier Community figurative mark reproduced below:
8 The goods covered by the earlier mark are in Classes 6, 11 and 19 and correspond, for each of those classes, to the following description:
– Class 6: ‘Bath screens and cabinets of metal; casings and coverings, essentially of metal’;
– Class 11: ‘Installations for water treating; taps; showers and shower cubicles (enclosures); combined showers; complete showers; multifunction showers; showers and shower sets; shower combinations; overhead showers; lateral showers; preassembled multifunction showers; baths; massage baths; baths and shower trays’;
– Class 19: ‘Bath screens and cabinets, not of metal’.
9 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
10 On 22 February 2010, the Opposition Division upheld the opposition in part. It found that there was a likelihood of confusion between the marks at issue in respect of all the goods covered by the mark applied for, cited in paragraph 2 above, which were in part similar and in part identical to those covered by the earlier mark, with the exception of the ‘mirrors’ in Class 20 which were dissimilar.
11 On 21 April 2010, the intervener filed a notice of appeal at OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision, in so far as it upheld the opposition in part.
12 By decision of 21 March 2011 (‘the contested decision’), the First Board of Appeal of OHIM upheld the appeal by rejecting the existence of a likelihood of confusion between the marks at issue in respect of all the goods covered by the international registration. Firstly, it confirmed the finding of the Opposition Division that the goods at issue were in part identical or similar and in part dissimilar. Secondly, it took the view that the similarities which may exist for the relevant public, which was defined as being made up of average consumers in the European Union, were not enough to outweigh the differences between the signs, in particular visually. It therefore found that the completely different overall impression of the signs which resulted excluded a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 between the marks at issue, even in respect of identical goods.
Forms of order sought
13 The applicant claims that the Court should:
– alter the contested decision pursuant to Article 65(3) of Regulation No 207/2009 by rejecting the international registration;
– in the alternative, annul the contested decision;
– order OHIM to pay the costs.
14 OHIM contends that the Court should:
– dismiss the action in its entirety;
– order the applicant to pay the costs.
15 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs, including those relating to the proceedings before OHIM.
Law
16 In support of its action, the applicant relies on three pleas in law alleging, first, infringement of its right to a fair hearing, secondly, infringement of Articles 75 and 76 of Regulation No 207/2009 and, thirdly, infringement of Article 8(1)(b) of that regulation.
17 Inasmuch as the second plea overlaps with the first plea, in that the applicant submits that the contested decision is based on facts which were not put forward by the parties, it is appropriate to examine those pleas together.
The first and second pleas, alleging infringement of the right to a fair hearing and infringement of Articles 75 and 76 of Regulation No 207/2009
18 In the context of the first plea, the applicant submits that the Board of Appeal infringed its right to a fair hearing, inasmuch as it upheld the international registration on the basis of arguments which are ‘clearly not reasonable’ in the light of the facts and arguments put forward by the parties. The applicant further submits that it was deprived of its right to a fair hearing for the purposes of Article 6 of the Convention for the Protection of Human Rights and Fundamental Freedoms, signed at Rome on 4 November 1950, as interpreted by European Court of Human Rights, since the Board of Appeal did not provide sufficient reasons for its finding that some consumers would perceive the first letter of the word element of the mark applied for as ‘s’ or ‘j’ instead of ‘d’.
19 In the context of the second plea, the applicant complains that in its assessment the Board of Appeal took into account two new questions which were not raised by the parties, relating to the perception of the international registration by the relevant public and the distinctive character of the word element ‘duschy’ in the mark applied for. It states that those questions are not based on the facts and evidence submitted by the parties, in accordance with the requirements of Articles 75 and 76 of Regulation No 207/2009, and submits that, in examining the facts of its own motion, the Board of Appeal exceeded the limits imposed by those provisions.
20 OHIM and the intervener dispute the applicant’s arguments.
21 It must be pointed out at the outset that, as regards the alleged infringement of the right to a fair hearing, the Court has excluded the possibility of relying on a right to a fair ‘hearing’ in proceedings before the Boards of Appeal of OHIM, since proceedings before the Boards of Appeal are administrative and not judicial in nature (see Case T‑273/02 Krüger v OHIM – Calpis (CALPICO) [2005] ECR II‑1271, paragraph 62 and the case-law cited). It follows that the applicant’s argument relating to infringement of its right to a fair hearing guaranteed by Article 6 of the Convention for the Protection of Human Rights and Fundamental Freedoms must be rejected as manifestly unfounded.
22 However, in so far as, by that head of claim, the applicant submits that the contested decision is based on facts other than those relied on by the parties during the opposition proceedings which were put forward by the Board of Appeal of its own motion and that the contested decision is not sufficiently reasoned, it must be held that it seeks in essence a finding, first, of infringement of its rights of the defence and of the right to a hearing, pursuant to the second sentence of Article 75 and Article 76(1) of Regulation No 207/2009, infringement of which is also alleged, and, secondly, infringement of the obligation to state the reasons for the decision under the first sentence of Article 75 of that regulation.
23 Firstly, as regards the infringement of the rights of the defence and of the right to a hearing invoked by the applicant, it must be borne in mind that the principle of respect for the rights of the defence is laid down by Article 75 of Regulation No 207/2009, according to which the decisions of OHIM are to be based only on reasons or evidence on which the parties concerned have had an opportunity to present their comments (judgment of 4 October 2006 in Case T-190/04 Freixenet v OHIM (Shape of a frosted white bottle), not published in the ECR, paragraph 28).
24 In accordance with that principle, a Board of Appeal of OHIM may base its decision only on matters of fact or of law on which the parties have been able to set out their views. Consequently, where the Board of Appeal gathers of its own motion facts intended to serve as a basis for its decision, it is under an obligation to notify the parties of those facts in order that the parties may submit their views on them (see Shape of a frosted white bottle, paragraph 30 and the case-law cited).
25 Although the right to be heard, as laid down by the second sentence of Article 75 of Regulation No 207/2009, covers all the factual and legal evidence which forms the basis for making the decision, it does not apply to the final position which the administration intends to adopt (see CALPICO, paragraph 65 and the case-law cited).
26 In the present case, as regards, firstly, the allegedly new question examined by the Board of Appeal relating to the absence of distinctive character of the word ‘duschy’, it must be pointed out that the intervener put forward arguments on that point in the opposition proceedings. In that regard, it must be noted that, both in its observations filed on 21 October 2008, and in its appeal against the Opposition Division’s decision, the intervener stated that the word element ‘dusch’ meant ‘shower’ in Swedish, that it constituted the root of the word ‘Dusche’ in German, which has the same meaning, and that there were similar equivalents to it in other languages of the European Union like French and Dutch (‘douche’); Italian (‘doccia’); Spanish (‘ducha’); and Portuguese (‘duche’). In addition, it stated that that element, in combination with other generic words, was contained in a number of other Community trade marks designating goods which are identical or similar to those covered by the mark applied for in the present case, which shows that it is descriptive in character and, consequently that it is devoid of any distinctive character.
27 In that regard it must be pointed out that although, in the course of the opposition proceedings, the applicant was given an opportunity to submit its observations on the absence of distinctive character of the element ‘dusch’, which is present in the earlier mark, it did not do so within the period prescribed, as was established by OHIM’s letter of 16 October 2009 to the applicant, and by a note of 30 November 2010 from the registry to the First Board of Appeal.
28 It follows that the applicant’s submission that it did not have the opportunity to be heard on that point is erroneous.
29 Next, as regards the allegedly new nature of the question of the relevant public’s perception of the mark applied for and, in particular, of the way in which the word element of that mark could be pronounced, it must be stated that that question is part of the examination relating to the phonetic comparison of the signs at issue. The Court notes that, in the present case, it is apparent from the case-file that the absence of phonetic similarity was expressly raised by the intervener before the Board of Appeal and that, consequently, the Board of Appeal had to assess the phonetic similarity of the signs before finding that there was no similarity between the signs at issue from a global standpoint.
30 The fact that the pronunciation of the first letter of the mark applied for is not called into question by the intervener is irrelevant, since it is ultimately for the Board of Appeal to assess whether the conditions laid down by Article 8(1)(b) of Regulation No 207/2009 are satisfied and, according to the case-law referred to in paragraph 25 above, the Board of Appeal is not required to hear the parties on the final assessment which it intends to adopt.
31 Moreover, as was stated in paragraph 27 above, the applicant did not submit any observations on the appeal within the period prescribed. Consequently, it cannot claim that it has not been heard on the question of the absence of phonetic similarity between the signs at issue.
32 It follows that the Board of Appeal did not infringe Article 75 of Regulation No 207/2009.
33 Secondly, it must be borne in mind that, under Article 76 of Regulation No 207/2009, in proceedings relating to relative grounds for refusal of registration, the examination is to be restricted to the facts, evidence and arguments provided by the parties and the relief sought.
34 That provision restricts the examination carried out by OHIM in two ways. It relates, first, to the factual basis of decisions of OHIM, that is, the facts and evidence on which those decisions may be validly based (see, to that effect, Case T-232/00 Chef Revival USA v OHIM – Massagué Marín (Chef) [2002] ECR II‑2749, paragraph 45), and, second, to the legal basis of those decisions, that is, the provisions which the jurisdiction hearing the case must apply. Thus the Board of Appeal, when hearing an appeal against a decision terminating opposition proceedings, may base its decision only on the relative grounds for refusal which the party concerned has relied on and the related facts and evidence it has presented (see Case T-185/02 Ruiz-Picasso and Others v OHIM – DaimlerChrysler (PICARO) [2004] ECR II‑1739, paragraph 28 and the case-law cited).
35 It is important to bear in mind that it cannot be the purpose of Article 76(1) in fine of Regulation No 207/2009 to compel the opposition division or Board of Appeal consciously to adopt a decision on the basis of factual hypotheses which are manifestly incomplete or contrary to reality (see, to that effect, PICARO, paragraph 32).
36 In the present case, first, as has been stated in paragraph 26 above, as regards the absence of distinctive character of the word ‘duschy’, the Board of Appeal did not find the facts of its own motion, but carried out an examination based on the facts, evidence and arguments provided by the parties and the relief sought.
37 Secondly, regarding the question of the relevant public’s perception of the word element of the mark applied for, it must be pointed out that, where an opposition to the registration of a Community trade mark is based on Article 8(1)(b) of Regulation No 207/2009, the Board of Appeal is required to adjudicate on whether the goods and services covered by the marks at issue are identical or similar and whether those marks are similar (see, to that effect, Case T‑425/03 AMS v OHIM – American Medical Systems (AMS Advanced Medical Services) [2007] ECR II-4265, paragraphs 28 and 29 and the case-law cited). Consequently, the degree of similarity of the signs and, in particular, the question of the pronunciation by the relevant public of the word element of the mark applied for, which is part of the phonetic comparison of the signs at issue, is a point of law which the departments of OHIM must examine of their own motion, even if the parties have not submitted observations in that regard.
38 In the light of the foregoing, it must be held that, contrary to the applicant’s claims, the Board of Appeal did not introduce new facts, but specified and applied the test which, according to settled case-law, is relevant for assessing whether there is a likelihood of confusion between the marks concerned, namely the presumed perception by an average reasonably observant and circumspect consumer of the signs at issue. That is thus an essential part of the Board of Appeal’s reasoning. The applicant cannot claim that, by using that indispensable test for its assessment of the likelihood of confusion, the Board of Appeal went beyond the bounds of the dispute between the parties (see, to that effect, PICARO, paragraph 35 and the case-law cited).
39 Consequently, the Board of Appeal did not infringe Article 76 of Regulation No 207/2009.
40 Thirdly, as regards the applicant’s submission that the Board of Appeal infringed the obligation to state reasons, it must be borne in mind that the first sentence of Article 75 of Regulation No 207/2009 provides that decisions of OHIM must state the reasons on which they are based. The obligation to state reasons, thereby laid down, has the same scope as that which derives from Article 296 TFEU. It is settled case-law that the statement of reasons required by Article 296 TFEU must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable the persons concerned to ascertain the reasons for the measure and to enable the competent court to exercise its power of review. It is not necessary for the reasoning to go into all the relevant facts and points of law, since the question whether the statement of reasons meets the requirements of Article 296 TFEU must be assessed with regard not only to its wording but also to its context and to all the legal rules governing the matter in question (Case C-447/02 P KWS Saat v OHIM [2004] ECR I-10107, paragraphs 63 to 65).
41 Furthermore, it must be borne in mind that it is apparent from settled case-law that the obligation to state reasons is an essential procedural requirement and distinct from the question whether the reasons given are correct, which goes to the substantive legality of the contested measure (see Joined Cases T-239/04 and T‑323/04 Italy v Commission [2007] ECR II-3265, paragraph 117 and the case‑law cited). The fact that a statement of reasons may be incorrect does not mean that there is no statement of reasons (see judgment of 17 May 2011 in Case T-7/10 Diagnostiko kai Therapeftiko Kentro Athinon ‘Ygeia’ v OHIM (υγεία), not published in the ECR, paragraph 59 and the case-law cited).
42 In the present case, it must be examined whether, as the applicant claims, the Board of Appeal infringed the obligation to state reasons by not setting out why it found that ‘it is likely that some consumers will not see the first letter of the contested mark as a “d” but as, for example, a “j” or an “s”’.
43 In that regard, it must be pointed out that, in paragraph 28 of the contested decision, the Board of Appeal stated that, on account of the particular font in which the word ‘duschy’ was printed and, in particular, its first letter, it was not possible to conclude that it would always be read as ‘duschy’, since it could also be read as ‘suschy’ or ‘juschy’.
44 It follows that, subject to the examination as to its merits which will be carried out in the context of the third plea, that finding constitutes a sufficient statement of reasons and the applicant’s head of claim, alleging a failure to state the reasons in respect of that point, must therefore be rejected.
45 Having regard to the foregoing, the first and second pleas must be rejected as unfounded.
The third plea, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
46 The applicant submits that the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009 as the signs are highly similar visually, phonetically and conceptually. It maintains, in that regard, that the word elements of the marks at issue constitute their dominant element and will attract the consumer’s attention most. In addition, it takes the view that, inasmuch as the marks at issue designate goods which are usually identified orally by the consumer, the marks are also phonetically similar, which is sufficient by itself to give rise to a likelihood of confusion as regards that kind of goods. Furthermore, the marks are also similar conceptually on account of the fact that they allude indirectly to shower products, both by the presence of the graphic representation of the whale in the mark applied for and by their word elements. Lastly, according to the applicant, the weak distinctive character of the earlier mark, if it is established, is not sufficient to preclude a likelihood of confusion where the goods are identical or similar.
47 OHIM and the intervener dispute the applicant’s arguments.
48 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.
49 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).
50 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 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 74).
51 The distinctive character of the earlier trade mark is also one of the relevant factors which may be taken into account in the global assessment of the likelihood of confusion (see, by analogy, Canon, paragraph 24).
52 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 (Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II-43, paragraph 42 and the case-law cited).
53 In the present case, it must be pointed out that the applicant has not disputed the Board of Appeal’s finding that the goods covered by the mark applied for, with the exception of the ‘mirrors’ in Class 20, are identical or similar to the goods covered by the earlier mark.
54 Likewise, the applicant has not disputed the definition of the relevant public. Consequently, it must be held, as did the Board of Appeal, that the relevant public is made up of average reasonably observant and circumspect consumers in the European Union.
55 The comparison of the signs at issue must be carried out in the light of those considerations.
The comparison of the signs
56 It is apparent from the case-law that 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 case-law cited).
57 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).
58 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 (Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 35).
– The visual comparison
59 The Board of Appeal found that, visually, the overall image produced by the signs at issue is considerably different. As regards the earlier mark, it pointed out that it consists of the expression ‘duscho harmony’, written in standard characters, and that the element ‘DUSCHO’, which will be read first and is written in capital letters which are larger than the letters of the element ‘harmony’, is likely to be identified by the relevant public as the dominant element of the mark in question. As regards the mark applied for, the Board of Appeal described it as a combination of the representation of a whale above a word written in fanciful, large, bold characters which may be read in different ways, namely as ‘duschy’, ‘suschy’ or ‘juschy’. Furthermore it took the view that the representation of the whale dominated the overall image produced by the mark applied for as opposed to the word element, which is nevertheless still important from a visual point of view.
60 In that regard, it must be stated that, as the Board of Appeal pointed out, the dominant element of the earlier mark is the word element ‘duscho’ and the applicant does not dispute this. By contrast, the word element of the mark applied for, namely ‘duschy’, cannot, as the applicant claims, be regarded as the element which dominates the overall impression created by the mark despite the presence of the figurative element.
61 Where a mark consists of both figurative and verbal elements, it does not automatically follow that it is the verbal element which must always be considered to be dominant (see judgment of 16 January 2008 in Case T‑112/06 Inter-IKEA v OHIM – Waibel (idea), not published in the ECR, paragraph 45 and the case-law cited). In the present case, the figurative element is visually dominant because of its substantially larger size and because it is above the word element.
62 That conclusion is not invalidated by the Board of Appeal’s finding that the word element of the mark applied for has a certain importance from a visual standpoint, since it correctly stated that the figurative element is prominent.
63 Furthermore, although the word elements ‘duscho’ and ‘duschy’ have five letters in common, they have perceptible visual differences because of their clearly different fonts, as the Board of Appeal has moreover correctly pointed out. The former word element is written in capital letters and in standard characters, whereas the latter is written in small, stylised, bold characters. Furthermore, their endings are different as their last letters are ‘o’ and ‘y’ respectively.
64 Furthermore, although the element ‘duscho’ in the earlier mark will hold the attention of the relevant public more and will dominate the overall impression made because of its position at the beginning of the sign in comparison with the word ‘harmony’, that is not true of the word element of the mark applied for, which is positioned below the larger figurative element. Consequently, the case‑law put forward by the applicant to illustrate its argument that the consumer has a tendency to give greater significance to the beginning of a sign than to its end is irrelevant in the present case.
65 Lastly, the presence of the element ‘harmony’ in the earlier mark, even though it is not the most dominant element, is nevertheless capable of visually differentiating the marks at issue, in the context of a global assessment of the signs, as that element has no equivalent in the mark applied for.
66 In any event, even where two marks contain highly similar verbal elements – which is not the case here – that fact does not, by itself, support the inference that there is a visual similarity between the marks at issue. The presence, in one of the two signs, of figurative elements set out in a specific and original way can have the effect that the overall impression conveyed by each mark is different (see idea, paragraph 56 and the case-law cited).
67 In those circumstances, given that, in the present case, the word element ‘duscho’ and the word element of the mark applied for are not similar and the figurative element representing a whale blowing water is stylised in an original way which will hold the consumer’s attention and will not be perceived as a decorative or secondary element in relation to the word element, with the result that the word element cannot be considered to be the dominant element, it must be held, as the Board of Appeal rightly concluded, that the signs at issue are visually different.
– The phonetic comparison
68 The Board of Appeal found that the signs at issue were slightly similar phonetically if the word element of the mark applied for was identified by the relevant public as ‘duschy’.
69 It must be pointed out that, as the Board of Appeal found, the sound made by the first five letters of the first word element in the earlier mark, ‘duscho’, and the sound made by the word element of the mark applied for, if it is perceived as ‘duschy’, will be identical and the only difference between them lies in their ending in ‘o’ or in ‘y’. However, as the Board of Appeal rightly observed, the finding that there is a phonetic similarity between the marks at issue must be balanced against the fact that the sound made by the second word element in the earlier mark, ‘harmony’, is not present in the mark applied for.
70 Furthermore, in the situation considered by the Board of Appeal in which the relevant public perceives the first letter of the word element of the mark applied for as an ‘s’ or a ‘j’, the phonetic similarity will be even slighter since it will consist only of the middle part of the two words, namely ‘usch’. The Board of Appeal was right to regard that situation as plausible on account of the particular way in which the word element in question is written, in particular its first letter.
71 Contrary to the applicant’s contentions, the description given by the intervener in its application for registration of the mark applied for does not affect the above assessment. The likelihood of confusion between the trade marks must be assessed in relation to the perception of the marks by the relevant public. Consequently, the applicant’s argument based on the description of the international registration in the application for its registration and in particular the way in which the word element of that mark was defined by the parties and by OHIM in the relevant documents during the opposition proceedings must be declared ineffective (see, to that effect, judgment of 22 March 2011 in Case T‑486/07 Ford Motor v OHIM – Alkar Automotive (CA), not published in the ECR, paragraph 58).
72 Having regard to the foregoing and since it is not certain that the word element of the mark applied for will be perceived by the relevant public as ‘duschy’ and not otherwise, it must be held that the signs are phonetically different.
– The conceptual comparison
73 The Board of Appeal found that there was a slight conceptual similarity between the signs at issue, on account of the possible association by a section of the relevant public of the elements ‘duscho’ and ‘duschy’ with the word ‘douche’ (shower), but that such a similarity did not have an influence on the absence of global similarity between the signs. The term ‘harmony’ in the earlier mark, which is the only term with a specific meaning in English, introduces an obvious conceptual dissimilarity.
74 It must be pointed out that the Board of Appeal’s statement that the terms ‘duscho’ and ‘duschy’ would not be understood by consumers in most of the Member States as referring to a shower is not correct. Even though it is true that neither of those terms has a specific meaning, they are close to the words ‘dusch’ and ‘dusche’ which mean ‘shower’ in Swedish and German respectively. The Board of Appeal moreover conceded that a section of the relevant public, namely German and Swedish, but also Spanish, Portuguese, Italian or French consumers, would associate those terms with shower goods and that, consequently, there might be a slight conceptual similarity between the marks at issue in that regard.
75 Furthermore, in its assessment of the likelihood of confusion, the Board of Appeal found that the terms ‘duscho’ and ‘duschy’ had a low degree of distinctiveness on account of the fact that they are descriptive of the goods at issue.
76 However, even though there is a slight conceptual similarity between the dominant element of the earlier mark and the non-dominant element of the mark applied for, that similarity is counteracted by the presence of the word ‘harmony’, which does not refer to the goods covered by the marks at issue, and which therefore has greater distinctive character. Although the presence of the water-blowing whale in the mark applied for conveys a conceptual message connected with the sea, it is not possible to ascertain a link with shower goods such as the goods at issue. Moreover, the applicant has not shown that an association with those products is possible.
77 It follows that, having regard to the overall impression made by the signs at issue, they are only slightly similar conceptually, which is not sufficient to counteract the marked visual and phonetic differences.
78 In the light of all of the foregoing, it must be held that the Board of Appeal was right to find that the signs at issue were very different globally.
The likelihood of confusion
79 Since one of the conditions necessary in order to establish that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, namely that the marks at issue must be identical or similar, has not been fulfilled in the present case, it must be held that the Board of Appeal was right to find that there is no likelihood of confusion between those marks.
80 The applicant’s arguments relating to the relevance of phonetic similarity in establishing that there is a likelihood of confusion in the present case, having regard to the way in which the goods covered by the marks at issue are marketed, are not capable of affecting that finding inasmuch as it has been held that the signs are phonetically different. Moreover, the applicant has in no way substantiated its claims that the goods covered by the marks at issue are asked for orally.
81 Likewise, it must be stated that the applicant has not substantiated its arguments that the alleged distinctive character of the earlier mark supports the conclusion that there is a likelihood of confusion, having regard to the fact that the goods at issue are identical or similar. In any event, the applicant’s argument must be rejected 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 (see Case T‑134/06 Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM) [2007] ECR II-5213, paragraph 70 and the case-law cited). However, a finding of the likelihood of confusion presupposes a certain similarity between the signs, which is absent in the present case.
82 Consequently, the Board of Appeal was right to find that there is no likelihood of confusion between the marks at issue, notwithstanding the fact that the goods at issue are in part identical and in part similar.
83 Having regard to all of the foregoing, the action must be dismissed in its entirety as none of the pleas put forward by the applicant in support of the form of order it seeks, either for the annulment or the alteration of the contested decision, is well founded.
Costs
84 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.
85 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and the intervener.
86 The intervener contended that the applicant should be ordered to pay the costs of the proceedings in their entirety, including the proceedings before the Opposition Division and the Board of Appeal. In that regard, it must be borne in mind that, pursuant to 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. However, that is not the case with regard to the costs incurred for the purposes of proceedings before the Opposition Division. Accordingly, the intervener’s request that the applicant, having been unsuccessful, be ordered to pay the costs of the administrative proceedings before OHIM can be allowed only as regards the costs necessarily incurred by the intervener for the purposes of the proceedings before the Board of Appeal.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders Duscholux Ibérica, SA to pay the costs, including those incurred by Duschprodukter i Skandinavien AB in the course of the proceedings before the Board of Appeal.
Papasavvas | Vadapalas | O’Higgins |
Delivered in open court in Luxembourg on 12 September 2012.
[Signatures]