JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
6 June 2013 (*)
(Community trade mark – Opposition proceedings – Application for the Community word mark NICORONO – Earlier Community word mark NICORETTE – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑580/11,
McNeil AB, established in Helsingborg (Sweden), represented by I. Starr, Solicitor, and G. Tritton, Barrister,
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 being
Alkalon ApS, established in Copenhagen (Denmark),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 3 August 2011 (Case R 1582/2010-2), relating to opposition proceedings between McNeil AB and Alkalon ApS,
THE GENERAL COURT (Sixth Chamber),
composed of H. Kanninen, President, S. Soldevila Fragoso (Rapporteur) and G. Berardis, Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Registry of the General Court on 8 November 2011,
having regard to the response lodged at the Court Registry on 28 February 2012,
having regard to the decision of 2 April 2012 refusing leave to lodge a reply,
further to the hearing on 28 November 2012,
gives the following
Judgment
Background to the dispute
1 On 8 February 2008 Alkalon ApS filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark in respect of which registration was sought is the word sign NICORONO.
3 The goods in respect of which registration was sought fall within Classes 5, 10 and 30 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 5: ‘Pharmaceutical preparations; medical drugs, pharmaceutical preparations for human use, namely smoking cessation products, plasters’;
– Class 10: ‘Medical devices for use in connection with smoking cessation’;
– Class 30: ‘Chewing gum’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 24/2008 of 16 June 2008.
5 On 16 September 2008 the applicant, McNeil AB, filed a notice of opposition, under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the earlier Community word mark NICORETTE, registered on 10 May 2002 under No 2190239, designating goods in Classes 5, 10 and 30 and corresponding, for each of those classes, to the following description:
– Class 5: ‘Pharmaceuticals for human use, being smoking cessation products’;
– Class 10: ‘Medical devices for use in connection with smoking cessation’;
– Class 30: ‘Chewing gum’.
7 The grounds invoked in support of the opposition were those referred to in Article 8(1)(b) and Article 8(5) of Regulation No 40/94 (now Article 8(1)(b) and Article 8(5) respectively of Regulation No 207/2009).
8 By decision of 16 June 2010 the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation No 207/2009 for all the contested goods on the ground that there was a likelihood of confusion on the part of the relevant public due to the identity of the goods in question and the similarity of the signs at issue.
9 On 13 August 2010 Alcalon filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
10 By decision of 3 August 2011 (‘the contested decision’), the Second Board of Appeal of OHIM annulled the Opposition Division’s decision and rejected the opposition in its entirety. As regard whether there was a likelihood of confusion between the marks at issue, the Board held (i) that the relevant public was composed of professionals and end consumers of pharmaceutical preparations, (ii) that the goods in question were identical, (iii) that having regard to the weak distinctive character of the common element ‘nico’, placed at the beginning of the marks at issue, the attention of the relevant public would be drawn to the end of each of the marks and, finally, (iv) that the visual and phonetic differences between those marks outweighed their similarities. The Board thus held that the marks at issue were not similar and consequently concluded that, even if the earlier mark had enhanced distinctiveness, there was no likelihood of confusion between them. With regard to the reputation of the earlier mark, the Board of Appeal held that, as the marks are not similar, it was not appropriate to apply the provisions of Article 8(5) of Regulation No 207/2009, concerning protection of a mark with a reputation.
Forms of order sought by the parties
11 The applicant claims that the General Court should:
– annul the contested decision;
– order OHIM to pay the costs.
12 OHIM contends that the Court should:
– dismiss the action in its entirety;
– order the applicant to pay the costs.
Law
13 In support of its action, the applicant puts forward three pleas in law, alleging infringements of the obligation to state reasons, of Article 8(1)(b) and of Article 8(5) of Regulation No 207/2009.
14 It is appropriate to consider, first, the second plea alleging, infringement of Article 8(1)(b) of Regulation No 207/2009.
15 In that regard, the applicant denies that the contested decision is well founded. It argues that (i) the Board of Appeal erred in taking the view that the level of attention of the relevant public was high and not merely average, (ii) the marks at issue are visually, phonetically and conceptually similar and there is, therefore, a likelihood of confusion between them and (iii) the Board of Appeal failed to examine whether there existed a likelihood of confusion and did not take account of the enhanced distinctiveness or repute of the earlier mark.
16 OHIM disputes the applicant’s arguments.
17 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trade mark and because of the identity or similarity of the goods or services covered by the two 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.
18 In accordance with 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 that same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned and 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 case-law cited).
19 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue 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 case‑law cited).
20 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 in question in that territory. However, it should be noted that, for a Community trade mark not to be registered, 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) [2006] ECR II‑5409, paragraph 76 and case-law cited).
21 It is in the light of those principles that this plea must be examined.
The level of attention of the relevant public
22 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 case-law cited).
23 In the present case, the Board of Appeal held, in paragraph 24 of the contested decision, that, insofar as the goods in question were pharmaceutical preparations, medical devices and chewing gum containing nicotine, the level of attention of the relevant public, composed of professionals and end consumers of those goods, would be relatively high.
24 The applicant, on the one hand, disputes that the relevant public is composed solely of health professionals and patients and, on the other, claims that the goods covered by the earlier mark are goods for use in connection with smoking cessation which cannot be equated with prescription medicines. On the contrary, they are mass market, everyday consumer goods which are sold in large quantities. The relevant public is therefore composed of ordinary citizens who are smokers and who want to stop smoking and whose level of attention must therefore be considered to be merely average.
25 In that regard, it should be noted at the outset that the Board of Appeal did not consider the relevant public to be composed solely of health professionals and patients, but of professionals and end consumers of the goods in question (paragraph 24 of the contested decision). In the present case, the ordinary citizens who are smokers and who want to stop smoking, to whom the applicant refers, are the typical consumers of those goods and are therefore included among the end consumers of those products. That argument should, therefore, be rejected.
26 Likewise, it should be noted that the fact that smoking cessation products are mass market consumer goods cannot have any effect on the level of attention of the relevant public. The level of attention, in the present case, is determined by two circumstances other than that indicated by the applicant. The first concerns the presence of professionals, including health professionals, among the relevant public, and the second relates to the characteristics of the goods in question, which affect the state of health of the end consumers.
27 With regard to pharmaceutical preparations in Class 5, according to the case‑law, first, medical professionals demonstrate a high level of attention when prescribing medicinal products and, secondly, as regards end-consumers, it can be assumed, where pharmaceutical preparations are sold without prescription, that the consumers interested in those products are reasonably well informed, observant and circumspect, since those products affect their state of health, and that they are less likely to confuse different versions of such products. Furthermore, even in circumstances where medical prescription is mandatory, consumers are likely to demonstrate a high level of attention when the products in question are prescribed, having regard to the fact that they are pharmaceutical preparations (judgments of 21 October 2008 in Case T‑95/07 Aventis Pharma v OHIM – Nycomed (PRAZOL), not published in the ECR, paragraph 29, and of 8 July 2009 in Case T‑240/08 Procter & Gamble v OHIM – Laboratorios Alcala Farma (oli), not published in the ECR, paragraph 50). Thus medicines, whether or not issued on prescription, can be regarded as receiving a heightened level of attention from consumers who are reasonably well informed and reasonably observant and circumspect (judgments of 15 December 2009 in Case T‑412/08 Trubion Pharmaceuticals v OHIM – Merck (TRUBION), not published in the ECR, paragraph 28, and in Case T‑331/09 Novartis v OHIM – Sanochemia Pharmazeutika (TOLPOSAN) [2010] ECR II‑5967, paragraph 26).
28 That conclusion also applies to the goods in Class 10, given that the use of medical devices in connection with breaking tobacco addiction can gradually reduce the amount of nicotine intake and that those medical devices, like the pharmaceutical preparations in Class 5, therefore affect the state of health of the end consumers, as they enable them to stop smoking.
29 With regard to the chewing gum in Class 30, whereas it is true that it is not specified that such gum contains nicotine, it should be emphasised, as stated by the Board of Appeal in paragraph 31 of the contested decision, that the element ‘nico’, included in the two marks, directly alludes to the nicotine contained in those goods and is highly evocative (see paragraph 52 below). Accordingly, the relevant public will establish a connection between the element ‘nico’ in the marks at issue and the chewing gum and will take the view that the gum contains nicotine. That conclusion is confirmed by the documents submitted by the applicant, which indicate that the chewing gum branded NICORETTE has medicinal properties (medicated chewing gums).
30 The applicant’s assertion that non-smokers, such as people who buy a nicotine replacement product for a third party, would also form part of the relevant public, even if well founded, does not undermine that conclusion, since the existence of that link between the chewing gum designated by a trade mark containing the element ‘nico’ and nicotine cannot be unknown to them. It must be assumed that non‑smokers will also perceive the element ‘nico’ in the signs at issue as an allusion to nicotine. As OHIM has argued, in the current European context where various campaigns are being actively conducted to encourage people to stop smoking, it is reasonable to believe that few people, smokers or not, are unaware that cigarettes contain nicotine and that nicotine-based products are intended to help people to stop smoking. Therefore, even non-smokers will perceive that chewing gum as a nicotine replacement product.
31 Insofar as, in the present case, the chewing gum designated by the earlier mark is a nicotine replacement product that allows the amount of nicotine intake to be gradually reduced and enables people to stop smoking, it must be held that the gum will affect the state of health of the end consumers. Accordingly, the level of attention of those consumers with regard to that chewing gum will also be high.
32 In the light of the foregoing, it must be held that, in view of their properties, the pharmaceutical preparations in Class 5, the medical devices to be used for breaking tobacco addiction in Class 10 and the chewing gum in Class 30 all affect the state of health of consumers. Consequently, the Board of Appeal correctly took the view, in paragraph 24 of the contested decision, that the level of attention of the relevant public was in any event likely to be high or, at least, higher than average with regard to the goods in question.
33 Consequently, the arguments submitted by the applicant must be rejected as unfounded.
The comparison of the signs
34 The global assessment of the likelihood of confusion must, as regards the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression created by them, 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 such a likelihood of confusion. However, 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).
35 It is settled case-law that two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (Case T‑6/01 Matrazen Concord v OHIM – Hukla Germany (MATRAZEN) [2002] ECR II‑4335, paragraph 30, and judgment of 10 December 2008 in Case T-290/07 MIP Metro v OHIM – Metronia (METRONIA), not published in the ECR, paragraph 41).
36 In the present case, the applicant disputes the finding of the Board of Appeal that the ‘nico’ element has a weak distinctive character and that the signs at issue are not similar.
The distinctive character of the element ‘nico’
37 The Board of Appeal took the view that the element ‘nico’, located at the beginning of the two signs at issue, evoked nicotine, an essential component of the nicotine replacement products designated by those signs, and that it was therefore a weakly distinctive element that did not dominate the overall impression produced by those signs. The Board therefore held that the presence of the element ‘nico’ at the beginning of the two signs could not be considered sufficient reason to conclude that those signs are visually, phonetically and conceptually similar.
38 The applicant challenges those findings of the Board of Appeal and argues that it failed to examine the marks as a whole, in accordance with the case-law. Likewise, the applicant disputes the link established by the Board of Appeal between the element ‘nico’, which is common to both of the marks at issue, and nicotine. In that regard, the applicant argues (i) that the element ‘nico’ will not be associated with nicotine in all the languages of the European Union, (ii) that it might be perceived as a first name or the abbreviation of another substance, namely niacin, and (iii) that non‑smokers will not make any connection between the element ‘nico’ and the term ‘nicotine’.
39 In addition, the applicant considers that the Board of Appeal was wrong to isolate the element ‘nico’, when it should have should have taken into account all the letters common to both signs, namely ‘nicor’.
40 OHIM disputes the applicant’s arguments.
41 In that regard, it should be recalled that, in accordance with settled case-law, while the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into word elements which, for him, suggest a concrete meaning or which resemble words known to him (Case T‑356/02 Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT) [2004] ECR II‑3445, paragraph 51; RESPICUR, paragraph 57; and judgment of 20 October 2011 in Case T‑214/09 COR Sitzmöbel Helmut Lübke v OHIM – El Corte Inglés (COR), not published in the ECR, paragraph 46).
42 It should also be noted that, as OHIM argued, the applicant was unable to rebut the Board of Appeal’s finding, set out in paragraph 31 of the contested decision, that the word ‘nicotine’ or a visually similar or phonetically identical word existed in all the official languages of the Member States. On the contrary, the examples referred to by the applicant, namely ‘νικοτίνη’ in Greek, ‘никотин’ in Bulgarian ‘nikotyna’ in Polish and ‘nikotinas’ in Lithuanian confirm this finding of the Board of Appeal.
43 Accordingly, it is appropriate to consider that, in the present case, the relevant public will tend to separate the marks at issue into two elements, namely, first, the element ‘nico’ that is common to them, which will be perceived, with regard to the goods in question, as an allusion to nicotine and, secondly, the elements ‘rette’, in the case of the earlier mark, and ‘rono’, in the case of the mark applied for, which have no clear meaning.
44 With regard to the applicant’s argument that the element ‘nico’ has other meanings, that must be rejected as unfounded. In the present case, the meaning of that element cannot be assessed without taking into consideration the goods designated by that mark (see, to that effect and by analogy, Case T‑34/00 Eurocool Logistik v OHIM (EUROCOOL) [2002] ECR II-683, paragraph 38). As is apparent from paragraphs 27 to 32 above, the goods in question are, in essence, nicotine replacement products that contain low quantities of nicotine and enable people to stop smoking. Therefore, even if the element ‘nico’ could have other meanings, the relevant public will perceive it, with regard to the goods covered by the marks at issue, as a reference to nicotine, and not as a first name or as the abbreviation of another substance.
45 With regard to the applicant’s argument that non-smokers will not make any connection between the element ‘nico’ and nicotine, that must also be rejected as unfounded. As was stated in paragraph 30 above, even if non-smokers are part of the relevant public, it is reasonable to believe that few people, smokers or non‑smokers, are unaware that cigarettes contain nicotine and that products intended to help people to stop smoking also contain it. Therefore, even non‑smokers will perceive the element ‘nico’ as a reference to nicotine.
46 In the light of the foregoing, the Board of Appeal correctly took the view that the element ‘nico’ would be understood by the relevant public as alluding to nicotine. On the other hand, as contended by OHIM and contrary to what the applicant claims, the element ‘nicor’ has no clear meaning for the relevant public due to the presence of the letter ‘r’ and it cannot, therefore, be isolated by that public from the marks at issue, each taken as a whole.
47 Further, the applicant argues that the element ‘nico’ does not describe any characteristic of the goods covered by the earlier trade mark and is therefore not descriptive. Furthermore, the applicant states that, even assuming that the element ‘nico’ is weakly distinctive, the earlier mark has acquired distinctive character through use and enjoys a reputation throughout the European Union.
48 OHIM disputes the applicant’s arguments.
49 It should, first, be noted that the Board of Appeal accepted, in paragraph 31 of the contested decision, that the element ‘nico’ was not descriptive of the goods covered by the signs at issue. The Board merely stated that that element was highly evocative of one characteristic of the goods in question and could therefore be considered to be of weak distinctive character.
50 For the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods or services for which the mark has been registered (Case T‑153/03 Inex v OHIM – Wiseman (Representation of a cowhide) [2006] ECR II‑1677, paragraph 35, and judgment of 12 July 2012 in Case T‑346/09 Winzer Pharma v OHIM – Alcon (BAÑOFTAL), not published in the ECR, paragraph 78).
51 As stated in paragraph 44 above, the element ‘nico’, which is common to both of the marks at issue, will be perceived by the relevant public as a reference to nicotine. That substance is present in low quantities in the goods covered by the two signs, which are, in essence, nicotine replacement products. The presence of that substance in those goods is therefore, from the point of view of the relevant public, a significant feature of those goods, the objective of which is to stop smoking.
52 Therefore, the Board of Appeal was correct to hold, in paragraph 31 of the contested decision, that, although not descriptive, the element ‘nico’ could indeed be regarded as highly evocative of a characteristic of the goods in question and could therefore be considered to be of weak distinctive character.
53 That conclusion cannot be invalidated by the applicant’s argument that the earlier mark has acquired distinctive character through use and enjoys a reputation throughout the European Union. That argument, which is relevant to the global assessment of the likelihood of confusion cannot play any role in relation to the weak distinctive character of the element ‘nico’. It should, therefore, be disregarded when the distinctive character of the element ‘nico’ is under consideration and should be examined when the likelihood of confusion is assessed.
54 In the light of the foregoing, the applicant’s arguments must be rejected.
The similarity of the signs at issue
55 The applicant claims that the marks at issue have a certain visual, phonetic and conceptual similarity that the Board of Appeal ignored. It thus criticises the Board of Appeal for holding that the element ‘nico’ was negligible and for taking into account, when comparing the marks at issue, only the final parts of those marks, in reliance on the judgment in Case T‑472/08 Companhia Muller de Bebidas v OHIM – Missiato Industria e Comercio (61 A NOSSA ALEGRIA) [2010] ECR II‑3907, which concerns complex marks. The applicant claims that the element ‘nico’ cannot be considered as negligible given its position in the signs at issue.
56 OHIM contends that the Board of Appeal examined each of the marks at issue as a whole and concluded that they were similar because of the identity of the element ‘nico’ and the letter ‘r’. The Board nevertheless stated that that similarity between the marks was offset to a large extent by the differences in their endings which, unlike the element ‘nico’, would be distinctive and would more strongly attract the attention of the relevant public.
57 OHIM also submits that the element ‘nico’ refers to nicotine and is therefore descriptive of one of the substances contained in the goods in question. It therefore considers that the relevant public will attribute more importance to the final part of the marks, which is the most distinctive.
58 In that regard, it should be noted that, contrary to what the applicant claims, the Board of Appeal did not consider the element ‘nico’ to be negligible when comparing the marks at issue. When comparing them, the Board merely stated (i) in paragraph 33 of the contested decision, that a weakly distinctive element of a mark was not generally considered to be the distinctive and dominant element of the overall impression conveyed by it, (ii) in paragraph 34, that the attention of the relevant public would be drawn to the end of the marks at issue, which was more distinctive and, (iii) in paragraph 35, that the relevant public would attribute little importance to the element ‘nico’ due to its very weak distinctive character.
59 Accordingly, the Board of Appeal did not exclude the element ‘nico’ from the comparison of the marks at issue. On the contrary, as is apparent from the comparison made in paragraphs 33 to 35 of the contested decision, the Board found that there were similarities between the marks, resulting from the coincidence of the common element ‘nico’, and then held that the similarities were ‘strongly mitigated by the unequal length of the trade marks and the presence of the endings of the signs at issue –RETTE and –RONO’ and that ‘the relevant consumers will attribute little importance to [the common element “nico”]’.
60 In accordance with the case-law, consumers normally attach more importance to the first part of trade marks (Joined Cases T-183/02 and T-184/02 El Corte Ingles v OHIM – González Cabello (MUNDICOR) [2004] ECR II-965, paragraph 81, and Case T-112/03 L’Oreal v Revlon (FLEXI AIR) [2005] ECR II-949, paragraphs 64 and 65). However, it is also settled case-law that that consideration cannot apply in every case (judgment of 16 May 2007 in Case T-158/05 Trek Bicycle v OHIM – Audi (ALLTREK), not published in the ECR, paragraph 70; Case T‑175/06 Coca-Cola v OHIM – San Polo (MEZZOPANE) [2008] ECR II‑1055, paragraph 31; and judgment of 12 November 2008 in Case T‑281/07 ecoblue v OHIM – Banco Bilbao Vizcaya Argentaria (Ecoblue), not published in the ECR, paragraph 32).
61 Thus, according to the case-law, when the element placed in the initial part has a weak distinctive character in relation to the goods covered by the marks at issue, the relevant public will attach more importance to their final part, which is the most distinctive (see, to that effect, Case T‑117/02 Grupo El Prado Cervera v OHIM –Debuschewitz’s heirs (CHUFAFIT) [2004] ECR II‑2073, paragraph 54, and COR, paragraph 56).
62 However, in the present case, the fact that the element ‘nico’, placed at the beginning of the marks at issue, has a weak distinctive character is offset by the fact that it represents two of the three syllables of the earlier mark and two of the four syllables of the mark applied for. It is therefore longer than the final part of the earlier mark and as long as the final part of the mark applied for. Thus, it must be held that, in spite of its weak distinctive character, it makes a significant contribution to the overall impression produced by the marks at issue and that the relevant public will attribute at least as much importance to it as to the final part of the marks at issue (see, to that effect, RESPICUR, paragraph 60).
63 Consequently, contrary to the finding of the Board of Appeal in paragraph 34 of the contested decision, the attention of the relevant public will not be drawn to the elements ‘ette’ and ‘ono’, placed at the end of the marks at issue. Despite its weak distinctive character, the element ‘nico’ is likely to attract the attention of the relevant public at least as much as the elements ‘rette’ and ‘rono’ because of its length and position at the beginning of the marks at issue.
64 The applicant’s arguments in that regard must, therefore, be accepted.
65 The applicant claims that, visually, the marks at issue contain five identical letters, appearing in the same order (‘n’, ‘i’, ‘c’, ‘o’ and ‘r’) from a total of nine letters in the case of the earlier mark and eight in that of the opposed mark. The applicant also considers that the Board of Appeal was wrong to find that the signs at issue were of different lengths, the earlier mark having nine letters and the mark applied for having eight. Phonetically, the applicant considers that the marks at issue are similar, first, because of the coincidence of the first five letters and, secondly, because of the subsidiary character of the final parts due to the stress put on the second syllable of both marks. On the conceptual level, the applicant argues that the Board of Appeal took the view that there was some similarity between the signs at issue but, contrary to the judgment in 61 A NOSSA ALEGRIA, did not take that similarity into consideration.
66 OHIM acknowledges that the marks at issue contain five identical letters, but argues that there are major differences between them. Visually, OHIM considers that the doubling of the letter ‘t’ in the earlier mark and the repetition of the letter ‘o’, separated in each case by a single letter, in the mark applied for produce a strong difference between the marks at issue in the eyes of the relevant public. Phonetically, the earlier mark is pronounced with three syllables, with the ‘alveolar’ sound ‘rèt’, while the mark applied for is pronounced with four syllables, three of which are dominated by the phoneme ‘o’. Conceptually, OHIM contends that the marks at issue, taken as a whole, do not have a clear meaning and that the presence of the element ‘nico’ at the beginning of those marks cannot be sufficient ground to conclude that there is conceptual similarity between them, given the highly evocative nature of that element. Furthermore, the final part of the earlier mark denotes something small and is reminiscent of ‘cigarette’, while the final part of the mark applied for has no meaning.
67 As regards visual similarity, it should be noted that the marks at issue are composed of a single word and, as the applicant argued, are of similar length, namely nine letters in the case of the earlier mark and eight in the case of the mark applied for. It should also be noted that, as OHIM acknowledges, from a total of eight letters in the case of the mark applied for and nine in the earlier mark, the first five letters of those marks, namely ‘n’, ‘i’, ‘c’, ‘o’ and ‘r’ are identical. They therefore share the majority of letters making up the marks at issue. Contrary to what OHIM states, neither the doubling of the letter ‘t’ in the earlier mark nor the repetition of the letter ‘o’ in the mark applied for in the final syllables of the marks at issue produce a significant difference between those marks in the eyes of the relevant public. Accordingly, it must be held that, visually, the similarities between them outweigh the differences (see, to that effect, RESPICUR, paragraph 55).
68 As regards phonetic similarity, it should be noted that, even if the earlier mark is pronounced with three syllables and the mark applied for with four, the pronunciation of the first two syllables, consisting of the element ‘nico’, is identical in both cases. The pronunciation of the third syllable, ‘rette’ and ‘ro’ respectively, points both to similarities, caused by the presence of the consonant ‘r’, and to differences, due to the distinction between the vowels ‘e’ and ‘o’, and the letter ‘t’ in the earlier mark. Finally, only the mark applied for contains a fourth syllable. Those differences are not sufficient, however, to offset the identity of the first two syllables and the similarity due to the presence of the consonant ‘r’ in the pronunciation of the third syllable (see, to that effect, RESPICUR, paragraph 56).
69 As regards conceptual similarity, it should be noted that the Board of Appeal recognised, in paragraph 35 of the contested decision, that the common element ‘nico’ of the marks at issue was evocative of nicotine for the relevant public. However, contrary to what the Board of Appeal concluded in paragraph 35, the presence of that common evocative element must be taken into consideration having regard to the length of that element in each of the marks at issue (see paragraph 63 above). In those circumstances, it must be held, first, that the relevant public will be able to distinguish the element ‘nico’ in the marks at issue and understand its conceptual content, which refers to nicotine and, secondly, as stated in paragraph 43 above, that the final parts of each of the marks have no meaning for the relevant public. The marks at issue are thus conceptually similar, from the point of view of the relevant public, because of the identical element ‘nico’, the only element with a clear and definite conceptual content (see, to that effect, RESPICUR, paragraph 59).
70 In the light of the foregoing, and as it is necessary to take into account the overall impression produced by the marks at issue, the marks at issue must be regarded as being visually, phonetically and conceptually similar.
71 Accordingly, the Board of Appeal committed an error when it found, in paragraph 39 of the contested decision, that the marks at issue were not similar.
The likelihood of confusion
72 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 the goods or services covered 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, paragraph 74).
73 The Board of Appeal held, in paragraphs 38 and 39 of the contested decision, that the marks at issue were not similar and that the relevant public would not assume that the goods sold under the marks at issue had the same commercial origin. Accordingly, the Board took the view that, even if the goods covered by those marks were identical, the differences between the marks were clearly perceptible by the relevant public, which had a higher level of attention. Furthermore, the Board of Appeal stated, in paragraph 39 of the contested decision, that, even assuming that the applicant had proved the enhanced distinctiveness of the earlier mark, the relevant public, having regard to its higher level of attention, would perceive the differences between the marks at issue.
74 The applicant complains that the Board of Appeal failed to examine whether there existed a likelihood of confusion and did not take into account the distinctive character acquired through use of the earlier mark, when carrying out the global assessment of that likelihood.
75 OHIM contends that the Board of Appeal, by taking into account the enhanced distinctiveness of the earlier mark, which it found to be substantiated, as well as the identity of the goods, took the view that the marks at issue were not sufficiently similar to give rise to a likelihood of confusion in the perception of a highly attentive public.
76 Furthermore, OHIM contends that, even if the earlier mark enjoys a reputation, the relevant public will not link the marks at issue solely because they share the element ‘nico’, which is strongly allusive.
77 In the present case, as stated in paragraph 70 above, the marks at issue are similar and, as the Board of Appeal recognised in paragraph 39 of the contested decision and as is not disputed, the goods in question are identical. Having regard to the case-law cited in paragraphs 18 and 72 above, it must be held that, contrary to what the Board of Appeal concluded in paragraphs 38 and 39 of the contested decision, the relevant public, faced with the marks at issue, will assume that the goods so branded have the same commercial origin. There is therefore a likelihood of confusion on the part of that public between the mark applied for and the earlier mark.
78 Consequently, the second plea in law must be upheld and, therefore, the contested decision annulled, there being no need to examine the relevance of the applicant’s argument concerning the enhanced distinctive character or repute of the earlier mark when carrying out the global assessment of the likelihood of confusion, or to rule on either the first plea, alleging an infringement of the obligation to state reasons, or the third plea, alleging an infringement of Article 8(5) of Regulation No 207/2009.
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. As OHIM has been unsuccessful, it must be ordered to pay the applicant’s costs, in accordance with the form of order sought by the applicant.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 3 August 2011 (Case R 1582/2010-2);
2. Orders OHIM to pay the costs.
Kanninen | Soldevila Fragoso | Berardis |
Delivered in open court in Luxembourg on 6 June 2013.
[Signatures]