JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
15 January 2013 (*)
(Community trade mark – Opposition proceedings – Application for the Community word mark BELLRAM – Earlier national word and figurative marks RAM and Ram – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009 – Right to be heard – Articles 63(2), 75 and 76 of Regulation No 207/2009 – Opposition period)
In Case T‑237/11,
Lidl Stiftung & Co. KG, established in Neckarsulm (Germany), represented by T. Träger, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by K. Klüpfel and D. Walicka, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Lactimilk, SA, established in Madrid (Spain), represented by P. Casamitjana Lleonart, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 1 March 2011 (Case R 1154/2009‑4), concerning opposition proceedings between Lactimilk, SA and Lidl Stiftung & Co. KG,
THE GENERAL COURT (Fourth Chamber),
composed of I. Pelikánová, President, K. Jürimäe (Rapporteur) and M. van der Woude, Judges,
Registrar: S. Spyropoulos, Administrator,
having regard to the application lodged at the Registry of the General Court on 4 May 2011,
having regard to the response of OHIM lodged at the Court Registry on 7 October 2011,
having regard to the response of the intervener lodged at the Court Registry on 22 September 2011,
having regard to the reply lodged at the Court Registry on 3 January 2012,
having regard to the rejoinder of OHIM lodged at the Court Registry on 7 March 2012,
further to the hearing on 10 July 2012,
gives the following
Judgment
Background to the dispute
1 On 15 May 2006, the applicant, Lidl Stiftung & Co. KG, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), under 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 BELLRAM.
3 The goods in respect of which registration was sought are in Class 29 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to ‘cheese’.
4 The application for the Community trade mark was published in Community Trade Marks Bulletin No 42/2006 of 16 October 2006.
5 On 9 January 2007, the intervener, Lactimilk, SA, filed a notice of opposition, under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2209), against registration of the mark applied for in respect of the goods in Class 29 referred to in paragraph 3 above.
6 The opposition was based on the following earlier Spanish marks:
– the figurative mark, yellow and blue, registered under number 2414439 (‘the first earlier figurative mark’), reproduced below:
– the figurative mark, registered under number 98550 (‘the second earlier figurative mark), reproduced below:
– the word mark RAM, registered under number 151890 (‘the earlier word mark’).
7 The first earlier figurative mark was registered for goods in Class 29 of the Nice Agreement and corresponding to the following description: ‘Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits, vegetables, meat and fish; jellies, compotes; eggs; edible oils and fats; pre-prepared courses made of meat, fish or vegetables and specially milk and milk products, yoghurt, cheese, butter, margarine, and fresh cream (milk product)’.
8 The second earlier figurative mark was registered for goods in Class 29 of the Nice Agreement and corresponding to the following description: ‘All kind[s] of butter, fresh milk, condensed milk and powdered milk, cheese, butter, yoghurt, kefir, and other derivatives of milk’.
9 The earlier word mark was initially registered for goods in Class 29 of the Nice Agreement and corresponding to the following description: ‘Fresh milk, condensed milk and powdered milk, cheese, butter, yoghurt, kefir, and other derivatives of milk’. That list of products was subsequently supplemented by the list of products corresponding to the following description: ‘Food product[s] of animal origin; edible fats and oils; pulses and other vegetables prepared for consumption or preserved; jellies and marmalades; meat, poultry and game; eggs; salad dressings; milk drinks in which milk is the basic ingredient; expressly excluding conserved fish and sea products’.
10 The opposition was based on all of the goods covered by the three earlier marks.
11 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
12 On 31 August 2009, the Opposition Division upheld the intervener’s opposition, solely on the basis of a comparison between the mark applied for and the first earlier figurative mark. First of all, as regards the comparison of the goods covered by those marks, the Opposition Division considered that they were identical. Next, as regards the comparison of the signs, the Opposition Division observed, first, that there was a medium degree of visual and phonetic similarity between them. Moreover, it observed that neither of the signs had a particular conceptual meaning in Spanish. Last, taking account of the average distinctiveness of the first earlier figurative mark, the Opposition Division concluded that there was a likelihood of confusion. Furthermore, it considered that, as there was a likelihood of confusion between the mark applied for and the first earlier figurative mark, there was no need to compare the mark applied for with, on the one hand, the second earlier figurative mark and, on the other, the earlier word mark.
13 On 1 October 2009, the applicant filed a notice of appeal at OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
14 By decision of 1 March 2011 (‘the contested decision’) the Fourth Board of Appeal of OHIM dismissed the appeal against the decision of the Opposition Division. In particular, it considered, first, that as only proof of registration of the earlier word mark had been adduced by the intervener, the assessment of the likelihood of confusion could be undertaken only with respect to that mark, to the exclusion of the two earlier figurative marks (see paragraphs 13 to 20 of the contested decision). Second, in the context of the assessment of the likelihood of confusion between the mark applied for and the earlier word mark, the Board of Appeal considered first of all that the proof of the genuine use of the earlier word mark had been adduced only for ‘milk, cream, milk drinks in which milk is the predominant ingredient’, so that that mark could be deemed to be registered only for those goods (see paragraphs 23 to 29 of the contested decision). Next, the Board of Appeal considered that there was a similarity between ‘milk, cream and milk drinks in which milk is the predominant ingredient’ covered by the earlier word mark and ‘cheese’ covered by the mark applied for (see paragraph 30 of the contested decision). Furthermore, it considered that the signs in question were similar (see paragraphs 31 to 35 of the contested decision) and that it had been established that the earlier word mark had acquired enhanced distinctiveness through intensive use (see paragraphs 37 to 39 of the contested decision). In the light of those findings, the Board of Appeal concluded that there was a likelihood of confusion between the mark applied for and the earlier word mark, even though the earlier word mark had only average distinctiveness (see paragraphs 36 to 40).
Forms of order sought
15 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
16 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
17 The applicant relies on five pleas in law, alleging (i) breach of the applicant’s right to be heard and of the Board of Appeal’s power of assessment; (ii) an error by the Board of Appeal relating to the goods covered by the earlier word mark that must be taken into account when assessing the likelihood of confusion; (iii) errors linked with evidence of the genuine use of the earlier word mark; (iv) an error with respect to the distinctiveness of the earlier word mark; and (v) errors in the assessment of the likelihood of confusion between the signs at issue.
18 OHIM and the intervener dispute the merits of those pleas.
The first plea in law, alleging breach of the applicant’s right to be heard and of the Board of Appeal’s power of assessment
19 In the context of the first plea in law, the applicant raises, in essence, two main complaints. First, the Board of Appeal breached the applicant’s right to be heard under Articles 63(2), 75 and 76 of Regulation No 207/2009. Second, the Board of Appeal misconstrued its own discretion under Article 4(2) and Article 10 of Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of OHIM (OJ 1996 L 28, p. 11), as amended by Commission Regulation (EC) No 2082/2004 of 6 December 2004 (OJ 2004 L 360, p. 8), read in conjunction with the right to be heard under Articles 63(2), 75 and 76 of Regulation No 207/2009. The applicant maintains that the Board of Appeal should have invited it to submit observations on the earlier word mark in the proceedings before it, since the Opposition Division had compared the mark applied for only with the first earlier figurative mark.
20 OHIM and the intervener contest the applicant’s argument.
21 In the first place, as regards the applicant’s complaint that the Board of Appeal breached its right to be heard, it should be noted at the outset that under Article 63(2) of Regulation No 207/2009, ‘[i]n the examination of the appeal, the Board of Appeal shall invite the parties, as often as necessary, to file observations, within a period to be fixed by the Board of Appeal, on communications from the other parties or issued by itself’.
22 Furthermore, Article 75 of Regulation No 207/2009 provides as follows:
‘Decisions of [OHIM] shall state the reasons on which they are based. They shall be based only on reasons or evidence on which the parties concerned have had on opportunity to present their comments.’
23 It is settled case-law that Article 75 of Regulation No 207/2009 lays down, in Community trade mark law, the general principle of the protection of rights of defence (see, by analogy, Case T‑191/07 Anheuser-Busch v OHIM — Budějovický Budvar (BUDWEISER) [2009] ECR II‑691, paragraphs 33 and 34 and the case‑law cited). In so far as Article 63(2) and Article 76 of Regulation No 207/2009 lay down the right of parties to be heard on the observations, facts and evidence adduced before the Board of Appeal, those two articles lay down, in Community trade mark law, the general principle of rights of the defence.
24 In accordance with that general principle of European Union law, also enshrined in Article 41(2)(a) of the Charter of Fundamental Rights of the European Union (OJ 2010 C 83, p. 389), a person whose interests are appreciably affected by a decision taken by a public authority must be given an opportunity to make his point of view known (see BUDWEISER, paragraph 23 above, paragraph 34 and the case-law cited).
25 In addition, it is settled case-law that it follows from Article 64(1) of Regulation No 207/2009 that, following the examination as to the merits of the appeal, the Board of Appeal is to decide on it and that, in doing so, it may, inter alia, ‘exercise any power within the competence of the department which was responsible for the contested decision’, that is to say, give judgment itself on the opposition by either rejecting it or declaring it to be founded, thereby either upholding or annulling the decision taken at first instance before OHIM. It thus follows from Article 64(1) of Regulation No 207/2009 that the effect of the appeal brought before it is that the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact (see BUDWEISER, paragraph 23 above, paragraph 43 and the case-law cited).
26 Moreover, Article 76 of Regulation No 207/2009 states as follows:
‘(1) In proceedings before it [OHIM] shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, [OHIM] shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
(2) [OHIM] may disregard facts or evidence which are not submitted in due time by the parties concerned.’
27 In the present case, it must first be noted that it is not clear from either the provisions relied on by the applicant or the case-law that the Board of Appeal is required to ask the parties for their observations on the existence of a likelihood of confusion between the mark applied for and one of the earlier marks if, like in the present case, the Board of Appeal bases its assessment of the likelihood of confusion on an earlier mark which the Opposition Division did not take into account but which was relied upon in support of that opposition. It is not disputed by the applicant that, by notice of opposition of 9 January 2007, the intervener relied inter alia on the earlier word mark in support of that opposition, or that the intervener expressly stated, in the grounds of its opposition lodged on 19 June 2007, that there is a likelihood of confusion between the mark applied for and, in particular, the earlier word mark.
28 Second, it must be found that the applicant had an opportunity to present, both before the Opposition Division and the Board of Appeal, its arguments that there is no likelihood of confusion between the mark applied for and, in particular, the earlier word mark, but that it chose not to develop its arguments in that regard before the Board of Appeal. It is common ground that, by letter of 22 December 2009, the applicant put forward arguments, in the appeal which it brought against the Opposition Division’s decision, by which it sought to dispute only the existence of a likelihood of confusion between the mark applied for and the first earlier figurative mark, and not between the mark applied for and the earlier word mark. However, in so far as the opposition was based inter alia on the earlier word mark and the Board of Appeal had a discretion, under Article 64(1) of Regulation No 207/2009, to assess the likelihood of confusion between just that earlier mark and the mark applied for, it was for the applicant to submit, in accordance with Article 76(1) of Regulation No 207/2009, in the appeal before the Board of Appeal, its observations on the earlier word mark if it wished the Board of Appeal to address them in the contested decision. The applicant cannot therefore claim that it could not foresee that the Board of Appeal would base its assessment of the likelihood of confusion on the earlier word mark.
29 It is clear from the assessments in paragraphs 27 and 28 above that the Board of Appeal did not breach the applicant’s right to be heard by not expressly inviting it to submit observations on the earlier word mark.
30 In addition, in so far as the applicant did not put forward any arguments, in its appeal brought against the Opposition Division’s decision, with regard to the existence of a likelihood of confusion between the mark applied for and the earlier word mark, it is not entitled to criticise the fact that the Board of Appeal did not explicitly address those arguments in the contested decision. While the Board of Appeal is called upon to carry out a new and full examination of the merits of the opposition, it follows, however, from Article 76 of Regulation No 207/2009, as set out in paragraph 26 above, that the Board of Appeal is required to examine only the pleas and arguments raised before it. Otherwise, that would lead to the Board of Appeal taking a decision on pleas and arguments that the applicant did not wish to raise before it at that stage of the proceedings.
31 It follows from the above findings (paragraphs 27 to 30 above) that the applicant’s first complaint must be rejected as unfounded.
32 In the second place, so far as concerns the applicant’s complaint that the Board of Appeal breached its own power of assessment in so far as it was required to inform the applicant of its intention to replace, in the context of the assessment of the likelihood of confusion, the first earlier figurative mark with the earlier word mark, it must be noted, with regard to the rules of law – which it alleges have been breached – referred to in paragraph 19 above, that Article 4(2) of Regulation No 216/96 provides as follows:
‘The rapporteur [in each Board of Appeal of OHIM] shall carry out a preliminary study of the appeal. He may prepare communications to the parties subject to the direction of the Chairman of the Board. Communications shall be signed by the rapporteur on behalf of the Board.’
33 Moreover, Article 10 of Regulation No 216/96 states that: ‘[i]f a Board deems it expedient to communicate with the parties regarding a possible appraisal of substantive or legal matters, such communication shall be made in such a way as not to imply that the Board is in any way bound by it’.
34 It must therefore be found that, contrary to what the applicant claims, the two provisions of Regulation No 216/96 set out in paragraphs 32 and 33 above, and which the applicant submits must be read in conjunction with Articles 63(2), 75 and 76 of Regulation No 207/2009, which provide for the right to be heard, do not impose an obligation on the Board of Appeal to inform the parties of its intention to take account, when assessing the likelihood of confusion, of one or all of the earlier marks upon which the opposition is based.
35 The applicant’s second complaint and the first plea in law in its entirety must, therefore, be rejected as unfounded.
The second plea in law, alleging an error relating to the goods covered by the earlier word mark that must be taken into account when assessing the likelihood of confusion
36 The applicant maintains, in essence, that the Board of Appeal infringed Article 41(1) of Regulation No 207/2009, read in conjunction with Rule 15(2)(f) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1), as amended by Commission Regulation (EC) No 1041/2005 of 29 June 2005 (OJ 2005 L 172, p. 4). In that regard, the applicant observes, in essence, that the Board of Appeal ought to have taken into consideration, in paragraph 29 of the contested decision, only ‘fresh milk, condensed milk and powdered milk, cheese, butter, yoghurt, kefir, and other derivatives of milk’ covered by the earlier word mark, in so far as only those goods were identified in the notice of opposition lodged within the three-month period prescribed by law following publication of the application for registration of the Community trade mark.
37 OHIM and the intervener contest the applicant’s argument.
38 It is appropriate (i) to set out the principal rules on filing an opposition and (ii) to ascertain the scope of the opposition filed by the intervener in order (iii) to establish whether, in the present case, the Board of Appeal was entitled to take account, when assessing the likelihood of confusion between the marks at issue, of all of the goods covered by the earlier word mark or whether it should have taken account of only some of them.
39 In the first place, it must be noted that, under Article 41(1) of Regulation No 207/2009, ‘[w]ithin a period of three months following the publication of a Community trade mark application, notice of opposition to registration of the trade mark may be given on the grounds that it may not be registered under Article 8 [of that regulation]’.
40 Next, Article 41(3) of Regulation No 207/2009 is worded as follows:
‘Opposition must be expressed in writing and must specify the grounds on which it is made. ... Within a period fixed by [OHIM], the opponent may submit in support of his case facts, evidence and arguments.’
41 In addition, Rule 15(2) of Regulation No 2868/95 provides as follows:
‘The notice of opposition shall contain:
…
(b) a clear identification of the earlier mark or earlier right on which the opposition is based, namely:
(i) where the opposition is based on an earlier mark within the meaning of Article 8(2)(a) or (b) of [Regulation No 207/2009] …, the indication of the file number or registration number of the earlier mark, the indication whether the earlier mark is registered or an application for registration, as well as the indication of the Member States including, where applicable, the Benelux, in or for which the earlier mark is protected, or, if applicable, the indication that it is a Community trade mark;
…
(f) the goods and services on which the opposition is based;
…’
42 Moreover, Rule 17(4) of Regulation No 2868/95 states as follows:
‘If the notice of opposition does not comply with the other provisions of Rule 15 [of Regulation No 2868/95, OHIM] shall inform the opposing party accordingly and shall invite him to remedy the deficiencies noted within a period of two months. If the deficiencies are not remedied before the time limit expires, [OHIM] shall reject the opposition as inadmissible.’
43 In addition, under Rule 18(1) of Regulation No 2868/95, ‘[w]hen the opposition is found admissible pursuant to Rule 17 [of that regulation, OHIM] shall send a communication to the parties informing them that the opposition proceedings shall be deemed to commence two months after receipt of the communication’.
44 Lastly, Rule 19 of Regulation No 2868/95, relating to ‘Substantiation of the opposition’, provides as follows:
‘(1) [OHIM] shall give the opposing party the opportunity to present the facts, evidence and arguments in support of his opposition or to complete any facts, evidence or arguments that have already been submitted pursuant to Rule 15(3), within a time limit specified by it and which shall be at least 2 months starting on the date on which the opposition proceedings shall be deemed to commence in accordance with Rule 18(1) [of that regulation].
(2) Within the period referred to in paragraph 1, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition. In particular, the opposing party shall provide the following evidence:
(a) if the opposition is based on a trade mark which is not a Community trade mark, evidence of its filing or registration, by submitting:
…
(ii) if the trade mark is registered, a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered;
…’
45 In the second place, the scope of the opposition filed by the intervener in the present case must be ascertained.
46 First, it is not disputed that, by the notice of opposition filed on 9 January 2007, the intervener indicated that its opposition was based on ‘all the goods and services covered by [the earlier word mark]’.
47 Second, in support of the notice of opposition filed on 9 January 2007, the intervener adduced a certificate (‘the first certificate’) of the Oficina Española de Patentes y Marcas (Spanish patents and trade marks office), dated 4 June 2004, which stated that the earlier word mark had been filed on 30 March 1944 for goods in Class 29 and corresponding to the following description: ‘Fresh milk, condensed milk and powdered milk, cheese, butter, yoghurt, kefir, and other derivatives of milk’.
48 Third, it is apparent from OHIM’s letter of 19 February 2007 to the intervener that OHIM asked it to provide or to complete, within a period of four months until 20 June 2007, all the facts, evidence and arguments on which its opposition was based and to prove the existence and the validity of the earlier marks upon which its opposition was based.
49 Fourth, by letter of 18 June 2007 sent to OHIM in reply to OHIM’s letter referred to in paragraph 48 above, the intervener provided OHIM with a copy of the registration certificate of the earlier word mark. That certificate (‘the second certificate’) of the Oficina Española de Patentes y Marcas, dated 28 March 2007, stated that that mark, which was registered on 30 March 1944, covers goods in Class 29 corresponding to the following description: ‘Fresh milk, condensed milk and powdered milk, cheese, butter, yoghurt, kefir, and other derivatives of milk’. It also specified that, from 8 September 1995, registration had been extended to goods corresponding to the following description: ‘Food product[s] of animal origin; edible fats and oils; pulses and other vegetables prepared for consumption or preserved; jellies and marmalades; meat, poultry and game; eggs; salad dressings; milk drinks in which milk is the basic ingredient; expressly excluding conserved fish and sea products’.
50 It therefore follows from the findings set out in paragraphs 46 to 49 above, that, first of all, the intervener filed its opposition within three months of publication of the application for registration of the mark applied for in the Community Trade Marks Bulletin. Next, while that notice of opposition stated that the opposition was based on ‘all of the goods covered’ by the earlier word mark, the first certificate only listed some of the goods covered by that mark. Lastly, the applicant provided, within the time-limit set by OHIM to complete its opposition, the second certificate which listed all the goods covered by that mark.
51 In the third place, in the light, on the one hand, of the rules set out in paragraphs 39 to 44 above and, on the other, of the findings set out in paragraph 50 above, it must be noted that the Board of Appeal did not err in taking account of all of the goods covered by the earlier mark when assessing the likelihood of confusion.
52 First, the intervener filed its opposition on 9 January 2007 in accordance with Article 41(1) of Regulation No 207/2009, that is to say within three months following publication of the application for registration of the mark applied for in the Community Trade Marks Bulletin on 16 October 2006 (see paragraph 4 above), expressly relying on the earlier word mark.
53 Second, it is also apparent from the notice of opposition that, in accordance with Rule 15(2)(b)(i) of Regulation No 2868/95, the intervener clearly identified the earlier word mark as being one of the marks upon which its opposition was based. Moreover, in accordance with Rule 15(2)(f) of Regulation No 2868/95 the intervener stated that ‘all the goods’ covered by the earlier word mark should be taken into account in the opposition proceedings. While it is regrettable that, contrary to what the intervener claims and as the OHIM file demonstrates, the intervener adduced the first certificate, which lists only some of the goods protected by the earlier word mark, that does not, however, affect the fact that it is expressly apparent from the notice of opposition that the intervener relied on all of the goods protected by that mark in support of its opposition.
54 Third, in the light of the inconsistency between, on the one hand, the notice of opposition, which states that that opposition is based on all of the goods covered by the earlier word mark, and, on the other, the first certificate, which lists only some of those goods, OHIM requested, in accordance with Rule 19(1) and (2)(a)(i) of Regulation No 2868/95, that the intervener provide it with another certificate proving the existence of the earlier word mark and the scope of protection of that mark, which the intervener did by adducing the second certificate, which lists exhaustively all of the goods and services upon which the intervener stated that its opposition was to be based.
55 Contrary to what the applicant claims, the intervener did not therefore illegally extend the scope of its opposition after the three-month time-limit had expired; it properly completed its opposition by providing the second certificate which contained the exact list of all of the goods covered by the earlier mark.
56 In those circumstances, the second plea in law must be rejected as unfounded.
The third plea in law, alleging errors linked with proof of the genuine use of the earlier word mark
57 The applicant claims that the Board of Appeal made errors linked with proof of the genuine use of the earlier word mark and, in so doing, infringed Articles 15 and 42(2) and (3) of Regulation No 207/2009.
58 OHIM and the intervener contest the applicant’s argument.
59 It must be noted, as a preliminary point, that, as is apparent from recital 10 in the preamble to Regulation No 207/2009, there is no justification for protecting an earlier trade mark except where the mark has actually been used. In keeping with that recital, Article 42(2) and (3) of Regulation No 207/2009 provides that an applicant for a Community trade mark may request proof that the earlier mark has been put to genuine use in the territory where it is protected during the five years preceding the date of publication of the Community trade mark application against which notice of opposition has been given.
60 Under Rule 22(3) of Regulation No 2868/95, proof of genuine use must relate to the place, time, extent and nature of use of the earlier mark.
61 Moreover, under Article 15(1)(a), in conjunction with Article 42(2) and (3), of Regulation No 207/2009, proof of genuine use of an earlier national or Community trade mark which is the basis of opposition proceedings against a Community trade mark application also includes proof of use of the earlier mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered (see, to that effect, Case T‑29/04 Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH) [2005] ECR II‑5309, paragraph 30 and the case-law cited).
62 The Court considers that it should start by examining the second of the applicant’s two complaints.
63 So far as concerns its second complaint, the applicant claims that the evidence of genuine use submitted by the intervener to OHIM relates to the earlier figurative marks set out in paragraph 6 above and, in particular, the first earlier figurative mark, and not the earlier word mark. In that regard, the applicant submits that, in accordance with Case C‑234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I‑7333, the intervener could not establish genuine use of the earlier word mark on the basis of documents depicting the first earlier figurative mark.
64 In the contested decision, the Board of Appeal found, in essence, in paragraph 26 of the contested decision, that the intervener had adduced invoices addressed to Spanish supermarkets in the amount of several thousand euros each, and which cover the period from October 2001 to October 2006, and that the word element RAM appeared in the letterhead of those invoices as well as in the description of the type of goods sold – milk, cream, and milk drinks – and their quantity and price. Moreover, in paragraph 27 of the contested decision, the Board of Appeal found that the earlier word mark also appears on the various documents provided by the intervener, such as photographs of advertisements and the packaging of some of the goods covered by that mark.
65 In addition, the Board of Appeal found, with regard to the invoices referred to in the previous paragraph, that, in accordance with Article 15(1)(a) of Regulation No 207/2009, the fact that the earlier word mark appears in blue print and against a yellow semi-circle does not alter its distinctive character since these are basic graphic elements commonly used in trade.
66 In the present case, it must be held, first, that, as the Board of Appeal rightly found in paragraphs 26 and 27 of the contested decision, the large number of invoices provided by the intervener in which the various goods sold are specifically identified by the earlier word mark cover the entire five-year period preceding the date of publication of the application for registration of the mark applied for. That fact is not contested by the applicant. Second, in addition to those invoices, not only the first earlier figurative mark but also the earlier word mark appear in several photographs of advertisements and packaging.
67 In those circumstances, it must be held that in the light of the documents referred to in paragraph 66 above, the Board of Appeal was right to find that there was genuine use of the earlier word mark.
68 In so far as the applicant claims that, in essence, the Board of Appeal was not entitled, in accordance with settled case-law, to rely on documents proving the genuine use of the first earlier figurative mark to find that there was use of the earlier word mark, on the basis of the lack of significant differences between the two marks, that argument must be rejected as being ineffective. Even if it were held that the Board of Appeal erred in making the finding set out in paragraph 65 above when assessing the genuine use of the earlier word mark, that would have no bearing on the conclusion set out in the previous paragraph to the effect that the evidence of use of the earlier word mark was sufficient to conclude that the use had been genuine.
69 So far as concerns its first complaint, the applicant claims that the proof of genuine use of the earlier word mark was established only for ‘ultra-heat treated milk and ... preserved milks and milk drinks’. The Board of Appeal was therefore wrong to find, in paragraph 29 of the contested decision, that the intervener had proved genuine use of the earlier word mark in respect of ‘milk, cream, milk drinks in which milk is the predominant ingredient’, to the exclusion of other goods covered by the earlier word mark.
70 In that regard, it must be noted that the invoices and the photographs of advertisements and packaging described in paragraph 64 above specifically refer to the sale of different types of milks such as whole milk, semi-skimmed milk and skimmed milk, as well as cream and milk drinks such as chocolate milk drinks.
71 First, while it is true that, as the applicant essentially points out, none of the documents provided by the intervener establish that the earlier word mark had been used for products falling within the category of ‘fresh milk’, the fact remains that, as OHIM pointed out, the specification of ‘fresh milk’ with regard to the earlier word mark must be understood as referring to liquid milk, in so far as it supplements the list of other types of milk — ‘condensed milk’ and ‘powdered milk’ — covered by that mark. Next, the applicant has not proved that ‘fresh milk’ constitutes a category of milk separate to whole milk, semi-skimmed milk and skimmed milk. Lastly, and in any event, as the intervener correctly pointed out, whole milk, semi-skimmed milk and skimmed milk are included in the category of ‘milk drinks in which milk is the predominant ingredient’, which correspond, essentially, to ‘milks’ to which other ingredients are added. The applicant’s arguments that the intervener has not provided proof of use of the earlier word mark in respect of ‘milk’ or ‘fresh milk’ must therefore be rejected as unfounded.
72 Second, so far as concerns the applicant’s argument that the intervener adduced limited evidence of use of the earlier word mark in respect of ‘cream’ without stating, in the notice of opposition, that that product corresponds to ‘derivatives of milk’, it must be noted that the invoices provided by the intervener, referred to in paragraph 64 above, point to a number of sales of ‘cream’ for the period in question. Moreover, the applicant does not dispute the fact that ‘cream’ corresponds to ‘derivatives of milk’. In those circumstances, the applicant’s argument in that regard must be rejected as unfounded.
73 Third, as regards the applicant’s argument that ‘milk drinks in which milk is the predominant ingredient’ cannot be taken into consideration in so far as they were not included in the notice of opposition, that argument must be rejected as unfounded. As noted in paragraphs 51 to 55 above, the intervener legitimately invoked all of the goods protected by that mark in support of its opposition, including ‘milk drinks in which milk is the predominant ingredient’. Moreover, the applicant does not contest that the intervener had provided proof of genuine use of the earlier word mark in respect of those goods.
74 In those circumstances, the applicant’s first complaint must be rejected as unfounded and the third plea in law must be rejected as unfounded in part and ineffective in part.
The fourth and fifth pleas in law, alleging, respectively, an error in assessing the distinctiveness of the earlier word mark and errors in the comparison of the signs at issue
75 With regard to the fourth plea in law, the applicant claims that the Board of Appeal infringed Article 76 of Regulation No 207/2009 and Rules 19(1) and (3) and 50(1) of Regulation No 2868/95. It considers, essentially, that the Board of Appeal wrongly took account of the enhanced distinctiveness of the earlier word mark even though the intervener did not produce any arguments or proof in that regard within the prescribed period.
76 In its fifth plea in law, the applicant submits that the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009. In that regard, it considers that there is no likelihood of confusion between the mark applied for and the earlier word mark. First of all, there is only a very remote similarity between milk and cheese. Moreover, the signs at issue are not similar, in particular in so far as, in respect of the mark applied for, the stress is not on the second syllable. Next, the Board of Appeal should not have taken enhanced distinctiveness into account, in particular because its assessment was limited by the scope of the opposition as determined by the intervener. Lastly, the Board of Appeal incorrectly assessed the existence of a likelihood of confusion between the marks at issue, in particular because the sign BELLRAM is made up of a single word and on account of the newly coined term ‘bellram’.
77 OHIM and the intervener dispute those two pleas in law.
78 It must be borne in mind at the outset that, while the distinctive character of an earlier mark on which an opposition is based must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment (see, to that effect, judgment of 31 January 2012 in Case T‑378/09 Spar v OHIM — Spa Group Europe (SPA GROUP), not published in the ECR, paragraph 22 and the case-law cited). For that reason, it is necessary to examine the applicant’s arguments raised in respect of the fourth plea in law at the same time as those raised in the context of the fifth plea in law, by which the applicant claims, in essence, that there is no likelihood of confusion between the mark applied for and the earlier word mark.
79 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 is not to be registered if, because of its identity with, or similarity to, that 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.
80 According to settled case-law, the risk that the public may 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 goods or services concerned, and taking into account all factors relevant to the circumstances of the case, in particular 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).
81 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 the case‑law cited).
82 In accordance with settled case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see Case T‑256/04 Mundipharma v OHIM — Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case‑law cited).
83 Lastly, as regards taking account of the distinctive character of a mark when globally assessing the likelihood of confusion, it must be noted that, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see, to that effect, SPA GROUP, paragraph 78 above, paragraph 22 and the case-law cited).
84 In the present case, it must be noted at the outset that the likelihood of confusion between the marks at issue must be assessed with regard to the average Spanish consumer. As the Board of Appeal correctly found in paragraph 22 of the contested decision, without its being contested by the applicant, the goods at issue are directed at final consumers who are part of the general public. Moreover, the earlier word mark was registered in Spain.
Comparison of the goods covered by the marks at issue
85 The applicant contests the Board of Appeal’s assessment, in paragraph 30 of the contested decision, that ‘milk, cream, milk drinks in which milk is the predominant ingredient’ covered by the earlier word mark are highly similar to ‘cheese’ covered by the mark applied for. According to the applicant, there is no similarity between the goods covered by the marks at issue or any similarity is remote.
86 According to settled case-law, in order to assess the similarity of the goods or services concerned, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see Case T‑443/05 El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37 and the case‑law cited).
87 In the present case, it must be stated, first, that, as the Board of Appeal correctly noted, in paragraph 30 of the contested decision, ‘cheese’, designated by the mark applied for, is a food product made entirely or almost entirely from ‘milk’, which is one of the goods covered by the mark applied for. Contrary to what the applicant claims, the goods covered by those signs are not therefore very distinct by their nature, but have, on the contrary, a certain similarity. That similarity is confirmed by the fact that, as OHIM correctly claimed, ‘milk’ and ‘cheese’ could be perceived as being rival or substitutable products by a consumer seeking a calcium enriched diet. The applicant’s argument that the goods in question have a different nutritional purpose and taste does not undermine that finding.
88 Second, even if it were established that, as the applicant submits, important Spanish cheese manufacturers do not produce milk, it would still be conceivable that, as OHIM correctly pointed out, the average Spanish consumer might not be aware of that fact. The average Spanish consumer might believe that the cheese and milk come from the same undertaking, on account of the fact that cheese is made entirely or almost entirely from milk.
89 Third, the applicant does not dispute that, as OHIM points out, the goods in question have the same distribution network, that is to say inter alia supermarkets, and that, as the Board of Appeal found in paragraph 30 of the contested decision, they are sold in the same sections of those supermarkets as milk products.
90 In the light of the considerations set out at paragraphs 87 to 89 above it must be found that the Board of Appeal did not make an error of assessment in finding that the goods at issue are highly similar. The applicant’s argument in that regard must therefore be rejected as unfounded.
Comparison of the signs at issue
91 The applicant claims either that there is no similarity between the signs at issue or that there is a slight similarity between them.
92 It is settled 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 marks, 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 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).
93 In the first place, with regard to visual similarity, the Board of Appeal found, in paragraph 33 of the contested decision, that the signs at issue, when assessed overall, were similar. In that regard, the Board of Appeal held, in essence, that, while the two marks at issue are of different length on account of the first four letters, ‘b’, ‘e’, ‘l’ and ‘l’, of the mark applied for, the fact remains that, even if the mark applied for is perceived as a whole, consumers are unlikely to disregard the fact that the two marks at issue have three letters, ‘r’, ‘a’ and ‘m’, in common, which make up nearly half of the sign for which registration is sought.
94 The applicant challenges that assessment by claiming that it is very unlikely that consumers will note that both the mark applied for and the earlier word mark have the same last three letters, ‘r’, ‘a’ and ‘m’, since, in accordance with settled case‑law, marks made up of a single word are perceived as a whole rather than as a word made up of different parts.
95 In the present case, it must be found that there are visual differences between the mark applied for and the earlier word mark on the basis that the mark applied for has seven letters whereas the earlier word mark only has three, and that the four first letters of the mark applied for are different to those contained in the earlier word mark. However, those dissimilarities are not sufficient to alter the relevant consumer’s impression that those marks, when assessed globally, are visually similar in view of the similar elements in them. First, as the Board of Appeal held, the fact that one of the two syllables comprising the mark applied for is identical to the only syllable of the earlier word mark creates an impression of similarity between those marks. Second, contrary to what the applicant claims, the fact that the mark applied for will be perceived as a whole does not call into question the similarity between the marks at issue on account of the fact that the earlier word mark is entirely contained in the mark applied for. Third, that similarity is not, contrary to what the applicant claims, diminished by the fact that the syllable common to those two marks, that is to say ‘ram’, only constitutes the second syllable in the mark applied for although it is settled case-law that consumers normally attach more importance to the beginning of signs. The term constituting the earlier word mark, ‘ram’, and that constituting the mark applied for, ‘bellram’, which are three and seven letters in length respectively, are both short signs. In those circumstances, the identical nature of the syllable ‘ram’, in the two marks at issue, is such as to attract and retain the attention of the relevant consumer.
96 The applicant’s arguments in that regard must therefore be rejected as unfounded and it must be held, as the Board of Appeal found, that, when assessed as a whole, the mark applied for and the earlier word mark are visually similar.
97 In the second place, with regard to phonetic similarity, the Board of Appeal held, in paragraph 34 of the contested decision, that the marks at issue, when assessed as a whole, were similar. The mark applied for has two syllables. Furthermore, in accordance with the Spanish rules of pronunciation, the stress would be on the second syllable which is identical to the single syllable which makes up the earlier word mark. Moreover, that second syllable begins with the letter ‘r’ which would have a very strong and distinct sound in Spanish.
98 The applicant disputes the Board of Appeal’s assessment. In the light of the Spanish rules of pronunciation, it would be wrong to consider that the stress in a word will necessarily be on the last syllable. In that regard, the emphasis of pronunciation would depend on the accentuation and some words which contain several syllables have no accentuation. The letter ‘r’ would not be stressed.
99 It must be noted, above all, as the Board of Appeal pointed out, that the mark applied for has one more syllable than the earlier word mark and that the first of the two syllables which make up the mark applied for is different to the syllable which makes up the earlier word mark. However, those dissimilarities are not sufficient to alter the relevant consumer’s impression that those marks, when assessed globally, are phonetically similar in view of the similar elements in them. First, those marks have an identical syllable which, on the one hand, constitutes the only word element making up the earlier word mark and, on the other, is one of the two syllables which make up the mark applied for. Second, even assuming that the Board of Appeal were to have erred in finding that, in Spanish, the stress is, in principle, placed on the second syllable, it must be held that the applicant has not established that, in the present case, the stress would be placed on the first rather than the second syllable, with the result that the pronunciation of the first syllable would reduce the importance of the second. In those circumstances, it must be considered that the relevant consumer would be able to discern clearly the phonetic similarity between the two marks at issue on the basis of the identical syllable ‘ram’ in the marks at issue. Third, even though it may be considered, in principle, that the consumer normally attach more importance to the beginning of words, that is not so in the present case. As stated in paragraph 95 above, on account of the fact that the marks at issue are two short signs, the identical syllable ‘ram’ in the marks at issue is such as to attract and retain the attention of the relevant consumer when pronounced. Moreover, and in any event, even if, as the applicant claims, the consonant ‘r’ is not, in principle, stressed in Spanish, the fact remains that it is a strong and distinctive consonant capable of accentuating the phonetic importance of the second syllable of the mark applied for.
100 In those circumstances, the applicant’s arguments in that regard must be rejected as unfounded and it must be held that there is phonetic similarity between the mark applied for and the earlier word mark, when assessed as a whole.
101 In the third place, with regard to conceptual similarity, the Board of Appeal held, in paragraph 35 of the contested decision, that the conceptual comparison of the signs at issue was not such as to influence the assessment of their similarity. It is necessary to confirm that finding, which the applicant does not challenge, since, as the Board of Appeal correctly held, neither of the signs at issue, when considered as a whole, has any meaning.
102 In the light of the findings set out in paragraphs 96, 100 and 101 above, it must be found that the signs at issue, when assessed as a whole, are similar, as the Board of Appeal held in paragraph 40 of the contested decision, on account of their visual and phonetic similarities and, in addition, in view of the fact that they have no meaning such as to influence the assessment of their similarity. The applicant’s arguments in that regard must therefore be rejected as unfounded.
The likelihood of confusion
103 The Board of Appeal found, first of all, in paragraphs 37 to 39 of the contested decision, that the earlier word mark has enhanced distinctiveness, in the light of the evidence of extensive use of the mark adduced by the intervener. Next, the Board of Appeal considered, in paragraph 40 of the contested decision, that, given the enhanced distinctiveness of the earlier word mark, the visual and phonetic similarity between the signs and the high degree of similarity of the goods, there is a likelihood of confusion. Lastly, the Board of Appeal stated, in paragraph 40 of the contested decision, that there is a likelihood of confusion between the signs at issue even if the earlier word mark only has average distinctiveness.
104 The applicant disputes that assessment claiming, first, so far as concerns the fourth and fifth pleas in law, that the Board of Appeal could not take the enhanced distinctiveness of the earlier word mark into consideration in so far as the intervener had not put forward any arguments in that regard within the prescribed period. Second, the Board of Appeal incorrectly assessed the existence of a likelihood of confusion between the marks at issue, in particular on the basis of the fact that the sign BELLRAM is only made up of a single word and on account of the uniform and newly coined term ‘bellram’.
105 In the present case, in so far as the relevant public is made up of average final consumers (see paragraph 84 above), the goods at issue are highly similar (see paragraph 90 above), and the signs at issue are similar (see paragraph 102 above), it must be stated that, as the Board of Appeal pointed out in paragraph 40 of the contested decision, there is a likelihood of confusion between the marks at issue, whether or not the earlier word mark has enhanced or weak distinctiveness.
106 In those circumstances, even if it were to be considered that the Board of Appeal erred in assessing the distinctive character of the earlier word mark, that would not affect the finding that it correctly concluded that there was a likelihood of confusion between the marks at issue.
107 None of the other arguments put forward by the applicant are capable of invalidating the conclusion set out in paragraph 106 above.
108 First, in so far as the applicant claims that the element ‘ram’ maintains its independent distinctive role in the mark applied for, it must be held that that argument, which the applicant also raised with regard to the comparison of the signs at issue, must be rejected for the reasons set out in paragraphs 95 and 99 above.
109 Second, so far as concerns the applicant’s argument that it follows from the Court’s case-law that the Court considered, in other cases relating to marks other than those at issue, that the existence of a single common syllable is not sufficient to give rise to a likelihood of confusion, that argument must be rejected as unfounded. The finding in a given case that the existence of a single syllable common to two marks at issue is not sufficient to give rise to a likelihood of confusion is linked to the facts of the case and is not capable of invalidating the assessment that, in the present case, the Board of Appeal did not err in the contested decision with regard to the findings set out in paragraph 102 above.
110 The fourth plea in law must therefore be rejected as ineffective and the fifth plea in law must be rejected as being ineffective in part and unfounded in part.
111 As all of the pleas in law raised by the applicant have been rejected, the action must be dismissed in its entirety.
Costs
112 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 the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1. Dismisses the action;
2. Orders Lidl Stiftung & Co. KG to pay the costs.
Pelikánová | Jürimäe | Van der Woude |
Delivered in open court in Luxembourg on 15 January 2013.
[Signatures]
Table of contents
Background to the dispute
Forms of order sought
Law
The first plea in law, alleging breach of the applicant’s right to be heard and of the Board of Appeal’s power of assessment
The second plea in law, alleging an error relating to the goods covered by the earlier word mark that must be taken into account when assessing the likelihood of confusion
The third plea in law, alleging errors linked with evidence of the genuine use of the earlier word mark
The fourth and fifth pleas in law, alleging, respectively, an error with respect to the distinctiveness of the earlier word mark and errors in the comparison of the signs at issue
Comparison of the goods covered by the marks at issue
Comparison of the signs at issue
The likelihood of confusion
Costs