JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
18 June 2013 (*)
(Community trade mark – Invalidity proceedings – Community figurative mark K9 PRODUCTS – Earlier Community figurative mark K9 – Relative grounds for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑338/12,
Rocket Dog Brands LLC, established in Hayward, California (United States), represented by J. Reid, Barrister,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by Ó. Mondéjar Ortuño, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Julius-K9 bt, established in Szigetszentmiklós (Hungary),
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 11 May 2012 (Case R 1961/2011-4), relating to opposition proceedings between Rocket Dog Brands LLC and Julius-K9 bt,
THE GENERAL COURT (Seventh Chamber),
composed of A. Dittrich, President, I. Wiszniewska-Białecka and M. Prek (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 23 July 2012,
having regard to the response lodged at the Registry of the General Court on 16 November 2012,
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 give a ruling 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 16 February 2009, Julius-K9 bt obtained the registration under No 5966031 of the Community figurative mark reproduced below (‘the contested mark’) at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1):
2 The goods for which the contested mark was registered are in Classes 18 and 25 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, inter alia, for each of those classes, to the following description:
– Class 18 – ‘Goods made of leather and imitations of leather not included in other classes; trunks and travelling bags; parasols and walking sticks; briefcases; wallets; tote-bag; walking sticks; purses; purses, not of precious metal; suitcases; hat boxes of leather; card cases; chain mesh purses, not of precious metal; garment bags for travel; toilet cases; imitation leather ; leather, unworked or semi-worked; umbrellas; travel cases; trunks; travelling sets; travelling bags’;
– Class 25 – ‘Clothing, footwear, headgear; heels; heelpieces for shoes; suits; layettes (clothing); babies’ pants; babies’ diapers of textile; bathrobes; bathing caps; berets; clothing made from imitations of leather; motorists’ clothing; paper clothing; boas [necklets]; teddies [undergarments]; brassieres; bodices (lingerie); chasubles; ladies’ dresses; shower caps; inner soles; dress handkerchiefs; masquerade costumes; mittens; footmuffs, not electrically heated; gabardines (clothing); galoshes; gaiters; money belts [clothing]; non-slipping devices for boots; belts [clothing]; half-boots; neckerchiefs; gloves [clothing]; slippers; ladies’ shirts; shirt yokes; shirts; slips [undergarments]; detachable collars; shirt fronts; wooden shoes; trousers, included in Class 25; trouser straps; braces; girdles; hats; hat frames [skeletons]; jackets; jersey clothing; stuff jackets [clothing]; skull caps; hoods; ready-made linings (parts of clothing); pockets for clothing; ready-made clothing; camisoles; corsets; shoulder wraps; ties; ascots; bibs, not of paper; sweat-absorbent underclothing (underwear); liveries; maniples; wristbands (clothing); coats; mantillas; corselets; miters (hats); dressing gowns; muffs [clothing]; caps; cap peaks; outerclothing; ear muffs [clothing]; jump suits; paper hats (clothing); parkas; wraps; furs [clothing]; petticoats; pullovers; raincoats; skirts; sandals; saris; shawls; pyjamas; sleeping masks; veils [clothing]; wimples; breeches [for wear]; lace boots; fittings of metal for shoes and boots; shoes (low shoes), included in Class 25; welts for boots and shoes; soles for footwear; footwear uppers; tips for footwear; aprons; dress shields; briefs; socks; sock suspenders; boots, included in Class 25; boot uppers; esparto shoes or sandals; stoles; beach clothes; beach shoes; garters; stockings; heelpieces for stockings; tights; sweaters; togas; t-shirts; turbans; topcoats; uniforms; underpants; underwear; leggings; waistcoats, included in Class 25; hosiery; top hats; all the aforesaid goods except sporting articles.’
3 On 9 July 2010, the applicant, Rocket Dog Brands LLC, filed an application for a declaration that the contested mark was invalid on the basis of Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009. That application was based on the registration as Community trade mark No 3933256, of 10 November 2005, of the following figurative mark:
4 The earlier mark was registered for goods in Class 25, namely ‘footwear, women’s footwear’.
5 The application for a declaration of invalidity was directed against the goods referred to by the contested mark, namely those set out in paragraph 2 above.
6 By decision of 3 August 2011, the Cancellation Division upheld the application for a declaration of invalidity of the contested mark in relation to all the goods in Class 25 referred to by that mark and certain products included in Class 18, namely ‘goods made of leather and imitations of leather not included in other classes, briefcases; wallets; purses; purses, not of precious metal; chain mesh purses, not of precious metal’. The Cancellation Division rejected the application for a declaration of invalidity for the other goods included in Class 18 which had been challenged. First of all, it found that the contested goods were identical, similar or dissimilar to the goods covered by the earlier mark. Next, it found that the marks at issue were visually similar to a low degree, phonetically similar to a medium degree and conceptually dissimilar, and that the distinctive character of the earlier mark was average. Moreover, it found that the word ‘PRODUCTS’ of the contested mark would be understood as a reference to the items sold and it was therefore not distinctive. In addition, it pointed out that while it was true that the stylised dog of the earlier mark could not be considered to be a merely decorative element, the marks at issue both contained the alphanumeric combination ‘K9’ which was dominant in the contested mark. Lastly, given all those findings, it found that, with regard to identical and similar goods, there existed a likelihood of confusion.
7 On 23 September 2011, the other party to the proceedings before the Board of Appeal filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.
8 By decision of 21 May 2012 (‘the contested decision’), the Fourth Board of Appeal of OHIM annulled the decision of the Cancellation Division and dismissed the application for a declaration of invalidity in its entirety.
9 First of all, the Board of Appeal considered that the goods included in Class 25 covered by the contested mark and those covered by the earlier mark were partly identical and partly similar. As regards the goods in Class 18 covered by the contested mark and those covered by the earlier mark it found that they were partly similar to a low degree and partly different. Second, as regards the comparison of the signs, the Board of Appeal found, first of all, that the stylised dog constituted the dominant and distinctive element of the earlier mark and that the alphanumeric combination ‘K9’ was the dominant and distinctive element of the contested mark. In the light of these findings, it subsequently found that the marks at issue were visually similar only to a low degree. In addition, since (i) the graphic elements of the marks were not pronounced, (ii) the marks both contained the alphanumeric combination ‘K9’ placed at the beginning of each one and (iii) the word ‘PRODUCTS’ of the contested mark could not be given much weight, it concluded that the signs were phonetically similar to a high degree. Finally, after observing that it was very unlikely that the alphanumeric combination ‘K9’ would be associated with a dog in the absence of any graphic link to that animal and that the pronunciation of the English word ‘canine’ and the alphanumeric combination ‘K9’ were sufficiently distinct such that the relevant public would not link the two terms, it found that the marks at issue were not conceptually similar. Third, as regards the overall assessment of the likelihood of confusion, it found that, in respect of articles of clothing, the low degree of visual similarity had to be given a greater weight in the overall assessment of the likelihood of confusion. It therefore concluded that the identical nature and similarity of the goods and the high phonetic similarity between the marks were outweighed by the low degree of visual similarity and consequently there was no likelihood of confusion.
Forms of order sought by the parties
10 The applicant claims that the Court should:
– annul the contested decision in so far as it rejects the application in relation to all goods in Class 25, and the following goods in Class 18, namely ‘Goods made of leather and imitations of leather not included in other classes; wallets, purses; purses, not of precious metal’;
– order the other party to the proceedings before the Board of Appeal to pay the costs of the proceedings.
11 OHIM claims that the Court should:
– dismiss the application for annulment in its entirety;
– order the applicant to pay the costs incurred by OHIM.
Law
12 In support of the action, the applicant essentially raises a single plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009 which is based on three complaints. In its first complaint it alleges that there is a strong conceptual similarity between the marks at issue. The second complaint alleges that the Board of Appeal erred in its assessment of the overall impression made by the marks at issue. In the third complaint, the Board of Appeal is accused of failing to properly apply the test, according to which the average consumer lacks the opportunity to make a direct comparison between the marks at issue, by taking the view that the consumer would make such an assessment.
13 At the outset the Court recalls that, under Article 53(1)(a) of Regulation No 207/2009, a Community trade mark is to be declared invalid on application to OHIM where there is an earlier trade mark as referred to in Article 8(2) of that regulation and the conditions set out in Article 8(1) of that regulation are fulfilled.
14 The relative ground for invalidity arising under Article 53(1)(a) of Regulation No 207/2009 in conjunction with Article 8(1)(b) of that regulation corresponds to the relative ground for refusal of registration laid down in Article 8(1)(b). Accordingly, the case-law relating to a likelihood of confusion within the meaning of Article 8(1)(b) of that regulation is also relevant in the present context (Case T-288/03 TeleTech Holdings v OHIM – Teletech International (TELETECH GLOBAL VENTURES) [2005] ECR II‑1767, paragraph 75, and judgment of 16 January 2008 in Case T‑112/06 Inter-Ikea v OHIM – Waibel (idea), not published in the ECR, paragraph 31).
15 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).
16 The question whether the Board of Appeal was correct to find that there was no likelihood of confusion must be examined in the light of the case-law cited above.
17 First of all, it is appropriate to examine the first complaint, alleging that there is a strong conceptual similarity between the marks at issue.
18 In the present case, it should be stated at the outset that the Board of Appeal was correct in its assessment, which moreover has not been disputed by the applicant, that the relevant public in respect of which the likelihood of confusion must be analysed is the average consumer of the products at issue in the European Union. That average consumer must be deemed to be reasonably well informed and reasonably observant and circumspect.
19 Similarly, the Court approves all the findings of the Board of Appeal, with which the applicant agrees moreover, made in respect of the products at issue. First of all, the Board of Appeal correctly pointed out that, as the goods in Class 25 referred to by the contested mark relate to shoes, they are included in the general ‘footwear’ category referred to by the earlier mark. Those goods are, therefore, identical. Next, as regards the other goods in Class 25 referred to by the contested mark, namely articles of clothing and headgear of different types, it is clear that the degree of similarity is average. In addition, it must also be held that the goods in Class 18, ‘leather and imitation leather; briefcases; wallets; purses, not of precious metal; chain mesh purses, not of precious metal’, referred to by the contested mark and those in Class 25 referred to by the earlier mark present a certain, but low, level of similarity. Finally, it should be held that there is no similarity between the goods in Class 18, ‘briefcases; wallets; tote bags’, referred to by the contested mark and the goods in Class 25 referred to by the earlier mark.
20 However, the parties disagree on whether the signs at issue are similar.
21 In the first place, so far as comparison of those signs is concerned, it should be noted 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 assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).
22 Next, the assessment of the similarity between two marks cannot be limited to 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 Shaker, cited in paragraph 21 above, 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 (Shaker, cited in paragraph 21 above, paragraph 42, and judgment of 20 September 2007 in Case C‑193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42).
23 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 inherent 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, and judgment of 8 February 2007 in Case T‑88/05 Quelle v OHIM – Nars Cosmetics (NARS), not published in the ECR, paragraph 57).
24 In the present case, it must be recalled that the contested mark is a figurative mark composed of a rounded rectangle frame in which the alphanumeric combination ‘K9’ is placed in italic characters. Below this, in much smaller fanciful characters, the word ‘PRODUCTS’ is displayed. The earlier figurative mark consists of a black rectangle, which contains the representation of a highly stylised dog with a bone between pointed teeth, under which there is the alphanumeric combination ‘K9’.
25 It must also be recalled that, in the contested decision, the Board of Appeal, first of all, considered that the alphanumeric combination ‘K9’ constituted the dominant and distinctive element of the contested mark since it was three to four times larger than the word ‘PRODUCTS’, which would be perceived as a reference to the items for sale and was, therefore, descriptive. As regards the earlier mark, the Board of Appeal observed that the figurative element of a highly stylised dog holding a bone between its prominent teeth constituted the dominant and distinctive element of that earlier mark, although the alphanumeric combination ‘K9’ would not be overlooked. Next, it found that the marks at issue were visually similar only to a low degree. In addition, it pointed out that the marks both shared the alphanumeric combination ‘K9’, placed at the beginning of each one, and that the word ‘PRODUCTS’ of the contested mark could not be given much weight. The Board of Appeal therefore concluded that there was a high degree of phonetic similarity. Lastly, it pointed out that, unlike the earlier mark, the contested mark did not convey the concept of a ‘dog’. It held that it was very unlikely that the alphanumeric combination ‘K9’ would be associated with such a concept in view of the absence of any graphic link to a dog, and that there was a sufficiently clear difference in the pronunciation of the English word ‘canine’ and the alphanumeric combination ‘K9’ that the relevant consumers would not link the two terms.
26 In the first place, the applicant disputes the claim that the figurative element of the earlier mark is its dominant element or, at the very least, that it is so dominant that the alphanumeric combination ‘K9’ can be ignored or plays no part in the overall assessment of the similarity of the marks at issue. Given the bearing of that question on the assessment of such similarity, it should be examined before a comparison of those signs is undertaken.
27 As the Board of Appeal and OHIM point out, the figurative element of the earlier mark representing a dog is both fanciful and eye-catching, in particular given that it is significantly bigger than the alphanumeric combination ‘K9’. Furthermore, that alphanumeric combination is placed below the earlier mark. Accordingly, OHIM correctly points out that the figurative element representing a dog clearly stands out in the earlier mark and thus constitutes the dominant element.
28 In this regard, the applicant is wrong to assert, in substance, that the Board of Appeal only took the figurative element of the earlier mark into account because of its dominance and therefore ignored the alphanumeric combination ‘K9’. It is stated explicitly in paragraph 27 of the contested decision that the alphanumeric combination ‘K9’ should not be overlooked and the analysis contained in paragraphs 28 to 31 of the contested decision shows that that element has indeed been taken into account by the Board of Appeal.
29 In the second place, the findings relating to the visual and phonetic similarity of the marks at issue, which the applicant accepted, must be approved. The Board of Appeal correctly pointed out that the marks at issue are visually similar only to a low degree given that their dominant elements are not the same and their respective graphic elements are different. Similarly, it must be held that the marks at issue are phonetically similar to a high degree.
30 In the third place, the applicant contends that the marks are strongly conceptually similar. First of all, the applicant claims that the alphanumeric combination ‘K9’ of the contested mark is an element phonetically identical to a recognisable term for the average consumer, who will automatically make the link to canine products. Next, the Board of Appeal did not take into consideration the fact that the other party to the procedure before the Board of Appeal recognised that the products in relation to which it has used its mark are mainly intended for animal keepers or security guards or are used for dog training purposes. In addition, the Board of Appeal did not take account of relevant facts from the public domain, namely that a robotic dog named ‘K-9’ appeared, in 1977, in a highly successful UK television series and that as a result of that use of that alphanumeric combination there has been for many years a strong mental association between the term ‘K9’ and the English word ‘canine’. Lastly, the applicant considers that the assertion that the alphanumeric combination ‘K9’ is used to designate size has no evidential basis.
31 First, the Board of Appeal was correct in finding that, unlike the earlier marks, the trade mark applied for does not contain any figurative elements conveying the concept of a ‘dog’. The word element ‘K9’ in the contested mark is only featured with another word, ‘PRODUCTS’, which does not contain any direct or indirect conceptual reference to that animal. As OHIM points out, it cannot be inferred, from the fact that the alphanumeric combination ‘K9’ and the word ‘canine’ are pronounced similarly, that that in itself creates a conceptual link with the concept of a ‘dog’. In other words, the phonetic similarity between the word ‘K9’ and the word ‘canine’ is not decisive. On the contrary, a consumer when confronted with the combination ‘K9’ in another context, such as in a clothes shop, will not immediately perceive that term as a reference to dogs.
32 In that regard, as OHIM correctly observes, the applicant has not provided evidence showing that the alphanumeric combination ‘K9’ was used in everyday language as a synonym for the word ‘dog’ or as a colloquial reference to that animal. The evidence adduced by the applicant in support of its argument is information from Wikipedia and Wiktionary and must be disregard since, as it is based on articles from a collective encyclopaedia and a collective dictionary established on the internet, whose content may be amended at any time and, in certain cases, by any visitor, even anonymously, such an argument is based on information lacking certainty (see, to that effect, Case T‑344/07 O2 (Germany) v OHIM (Homezone) [2010] ECR II‑153, paragraph 46, and judgment of 16 November 2011 in Case T‑500/10 Dorma v OHIM — Puertas Doorsa (doorsa FÁBRICA DE PUERTAS AUTOMÁTICAS), not published in the ECR, paragraph 55).
33 Moreover, the argument relating to the existence of a British television series and the evidence adduced in support of it were presented for the first time before the General Court. It follows from Article 65(2) of Regulation No 207/2009 that facts not submitted by the parties before the adjudicating bodies of OHIM cannot be submitted at the stage of the appeal brought before the General Court, which is called upon to assess the legality of the decision of the Board of Appeal by reviewing the application of European Union law made by that board, particularly in the light of facts which were submitted to the latter. The General Court cannot, however, carry out such a check by taking into account matters of fact newly produced before it (see, to that effect, Case C‑29/05 P OHIM v Kaul [2007] ECR I‑2213, paragraph 54, and judgment of 10 December 2008 in Case T‑228/06 Giorgio Beverly Hills v OHIM – WHG (GIORGIO BEVERLY HILLS), not published in the ECR, paragraph 26). To admit such evidence would be contrary to Article 135(4) of the Rules of Procedure of the Court, under which the parties’ pleadings may not change the subject matter of the proceedings before the Board of Appeal (see judgment of 13 May 2009 in Case T‑183/08 Schuhpark Fascies v OHIM – Leder & Schuh (jello SCHUHPARK), not published in the ECR, paragraph 45 and the case-law cited).
34 In the light of the above, it must be held that the marks at issue are not conceptually similar.
35 None of the arguments advanced by the applicant can cast doubt on those findings.
36 First of all, there is nothing of relevance in the judgment of 14 February 2008 of the General Court in Case T‑189/05 Usinor v OHIM – Corus (UK) (GALVALLOY), (not published in the ECR, paragraph 62), relied on by the applicant, according to which the relevant consumer, perceiving a word sign, will break it down into verbal elements which, for him, suggest a concrete meaning or which resemble words known to him. However, unlike the present case, that judgment concerned verbal marks composed of two word elements placed side by side, which were easily identifiable and understandable.
37 Second, the argument that, in its grounds of appeal, the other party to the procedure before the Board of Appeal recognised that the products on which it placed its mark were linked to dogs must be rejected as irrelevant.
38 It should be recalled that it is for the person requesting registration of a sign as a Community trade mark to give, in the application, a list of the goods or services in respect of which the registration is requested and to provide, for each of those goods or services, a description clearly indicating their nature. OHIM, for its part, must examine the application in relation to all the goods or services on the list concerned (Case T‑483/10 Pukka Luggage v OHMI – Azpiroz Arruti (PUKKA), not published in the ECR, paragraph 37). If the list of goods or services covered by a Community trade mark application includes one or more categories of goods or services, OHIM is not under any obligation to make an assessment of each of the goods or services coming within each category, but must direct its examination to the category in question, as such (order of 15 November 2006 in Case T‑366/05 Anheuser-Busch v OHIM – Budĕjovický Budvar (BUDWEISER), not published in the ECR, paragraph 35, and Case T‑304/06 Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II‑1927, paragraph 23).
39 On the one hand, it does not appear that the products in Classes 18 and 25 for which the contested mark has been registered have, as such, any link with dogs. On the other hand, it is clear from the case-law cited in paragraph 38 above that the Board of Appeal was not under any obligation to make an assessment of each of the goods coming within each category referred to in the registration of the contested mark and it was not for the Board of Appeal to consider whether certain goods contained in the list might be for animal keepers or security guards.
40 Lastly, the applicant contests the fact that the alphanumeric combinations may be used to designate size and that the element ‘K9’ could therefore be perceived as such an indication.
41 At paragraph 37 of the contested decision, the Board of Appeal indicates that, in the overall assessment of the likelihood of confusion, it also had to take into account the fact that letters and alphanumeric combinations were often used to designate the size of articles of clothing and that consumers would, therefore, not focus on them as an indication of the products’ origin.
42 Even though it is well known that the size of articles of clothing is indicated by letters or figures or by the combination of a figure with a letter (like, for example, the size of brassieres) it has not, however, been shown that the reverse combination, namely that of a letter and a figure, might be used to designate the size of articles of clothing. Accordingly, the Board of Appeal made an error of assessment in finding that the relevant consumer would not see that type of combination as an indication of the origin of the products.
43 However, that error does not undermine the Board of Appeal’s assessment that the marks at issue are not conceptually similar. First of all, that error occurred during the global assessment of the likelihood of confusion and not during the assessment of the conceptual similarity. Second, the fact that the consumer concerned does not perceive the alphanumeric combination ‘K9’ of the contested mark as designating the size of the articles of clothing at issue does not necessarily imply that he will perceive it as being linked to dogs.
44 In the light of the above, the Court must reject the first complaint, alleging a strong conceptual similarity between the marks at issue.
45 Second, it is necessary to examine the complaint that the Board of Appeal erred in its assessment of the overall impression made by the marks at issue.
46 At the outset it should be recalled that the global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, the similarity of the trade marks and that 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).
47 It should be made clear that, in the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the opposing signs do not always have the same weight. It is appropriate to examine the objective conditions under which the marks may be present on the market (Case T‑129/01 Alejandro v OHIM – Anheuser-Busch (BUDMEN) [2003] ECR II‑2251, paragraph 57, and Joined Cases T‑117/03 to T‑119/03 and T‑171/03 New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) [2004] ECR II‑3471, paragraph 49). The extent of the similarity or difference between the signs may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by the opposing signs are marketed. If the goods covered by the marks in question are usually sold in self-service stores where consumers choose the goods themselves and must therefore rely primarily on the image of the trade mark applied to the goods, the visual similarity between the signs will be, as a general rule, more important. If, on the other hand, the goods covered are primarily sold orally, greater weight will usually be attributed to any phonetic similarity between the signs (NLSPORT, NLJEANS, NLACTIVE and NLCollection, paragraph 49). Likewise, the degree of phonetic similarity between two marks is of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually perceives the mark designating those goods in a visual form (Case T‑292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II‑4335, paragraph 55, and Case T‑301/03 Canali Ireland v OHIM – Canal Jean (CANAL JEAN CO. NEW YORK) [2005] ECR II‑2479, paragraph 55).
48 As OHIM rightly points out, the goods at issue are habitually bought after visual inspection so that, in accordance with the case-law cited in paragraph 47 above, it must be held that the visual aspect is, in the present case, of greater importance in the global assessment of the likelihood of confusion.
49 Accordingly, even if there is a similarity between the goods covered by the marks at issue and they are phonetically similar to a high degree, that similarity is outweighed by the conceptual difference and the low degree of visual similarity. Those elements constituted sufficient grounds to rule out a likelihood of confusion on the part of the relevant public.
50 In that regard, the Court must reject the second complaint based, in essence, on the fact that in the global assessment of the likelihood of confusion, the Board of Appeal wrongly considered that its assessment of low visual similarity outweighed other factors, in particular the identical nature of the goods and the strong phonetic similarity of the marks.
51 Aside from the fact that the complaint is not substantiated, the Board of Appeal correctly considered that, in the present case, greater weight had to be attributed to the visual similarity between the signs, as is apparent from paragraphs 45 to 48 above.
52 Third, in its final complaint, the applicant claims, first of all, that the Board of Appeal wrongly held that the relevant consumer would be able to distinguish the different commercial origins of the products at issue. It points out that the Board of Appeal found, in paragraph 34 of the contested decision, that the relevant consumer did not have the opportunity to make a direct comparison between the different marks but supposed, in paragraph 37 of the same decision, that such a direct comparison was possible. That argument cannot be upheld.
53 Contrary to what the applicant alleges, it is not apparent from the contested decision that the Board of Appeal indicated that the consumer would make a direct comparison between the marks at issue. In paragraph 34 of the contested decision the Board of Appeal points out that, according to settled case-law, the average consumer only rarely has the chance to make a direct comparison between the different marks and must rely on his imperfect recollection of them. That case-law does not imply that greater importance cannot be attached to the visual aspect of the marks. In the present case, as the products concerned are articles of clothing, it should be noted that those articles of clothing are generally chosen visually. That is, in essence, what the Board of Appeal stated in paragraph 37 of contested decision, namely that the relevant consumer would have the possibility of perceiving the visual elements distinguishing the marks at issue.
54 Next, the applicant contends that the consumer’s recollection of the earlier mark will be stronger in relation to the figurative element than in relation to the alphanumeric combination ‘K9’ and claims that it is that combination which will be used when describing the source of the products.
55 Those arguments cannot succeed. On the one hand, as is apparent from paragraphs 27 and 28 above, the figurative element representing a dog constitutes the dominant element of the earlier mark.
56 On the other hand, while it cannot be excluded that the consumer will take into account oral communication in respect of the product and of the mark at issue, articles of clothing are generally chosen visually. Therefore, the visual perception of the marks in question generally occurs before purchase. Accordingly, the visual aspect plays a greater role in the global assessment of the likelihood of confusion (NLSPORT, NLJEANS, NLACTIVE and NLCollection, cited in paragraph 47 above, paragraph 50).
57 The fact that those goods may, in some circumstances, be the subject of discussion between consumers or with the vendor is therefore irrelevant, since, at the time of purchase, the goods in question, and therefore the marks which are affixed to them, are visually perceived by consumers (NARS, cited in paragraph 23 above, paragraph 69).
58 Lastly, the argument that the alphanumeric combination ‘K9’ is the mark of the applicant against which a notice of opposition has been filed by the other party before the Board of Appeal is irrelevant. In essence, the applicant appears to allege that the Board of Appeal failed to take that fact into account in its examination of the similarity of the signs.
59 Although, in accordance with the principle of sound administration, it is for the adjudicating bodies of OHIM to take into account, when examining an application for registration of a Community trade mark, the decisions already taken in respect of similar applications and consider with particular care whether it should have decided in the same way or not (see, to that effect, Case C‑51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I‑1541, paragraphs 73 and 74), such an obligation cannot be stretched so far as to take into account the arguments raised by a party made in the context of other proceedings which concern similar products. Indeed it is important to bear in mind that decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal are called on to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and not discretionary powers (see, to that effect, Case T‑139/08 The Smiley Company v OHIM (Representation of half a smiley smile) [2009] ECR II‑3535, paragraph 36, and Joined Cases T‑582/11 and T‑583/11 Solar-Fabrik v OHIM (Premium XL), not published in the ECR, paragraph 30).
60 In the light of the reasons set out in paragraphs 53 to 59 above, the third complaint must be rejected.
61 Therefore, the Board of Appeal was correct to find, in paragraphs 38 to 40 of the contested decision, that it could not be considered that there was a likelihood of confusion.
62 As regards the error of assessment noted in paragraph 42 above, it must be held that it has no effect on the lawfulness of the contested decision. The findings contained in that decision relating to the other elements at issue – namely those relating to the dominant and distinctive elements of the marks at issue, to the examination of the visual, phonetic and conceptual similarity of the signs and to the greater weight to be attributed to the visual similarity – are sufficient to support a finding that, in the present case, there was no risk of confusion.
63 In the light of all the foregoing, the single plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be dismissed. Accordingly, the application must be dismissed.
Costs
64 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. Since the applicant has been unsuccessful, it must be ordered to pay OHIM’s costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Dismisses the action.
2. Orders Rocket Dog Brands LLC to pay the costs.
Dittrich | Wiszniewska-Białecka | Prek |
Delivered in open court in Luxembourg on 18 June 2013.
[Signatures]