JUDGMENT OF THE COURT OF FIRST INSTANCE (Seventh Chamber)
16 September 2009 (*)
(Community trade mark – Opposition procedure – Application for Community word mark Bebimil – Earlier Community and national word marks BLEMIL – Earlier national word mark BLEMIL 1 – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009) – Likelihood of confusion)
In Case T-221/06,
Hipp & Co. KG, established in Sachseln (Switzerland), represented by M. Kinkeldey and A. Bognár, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by S. Latinien and A. Folliard‑Mongiural, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being
Laboratoris Ordesa, SL, established in Sant Boi e Llobregat (Spain), represented by R. Thierie and E. Sugrañes Coca, lawyers,
ACTION brought against the decision of the First Board of Appeal of OHIM of 2 June 2006 (Case R 571/2005-1), relating to opposition proceedings between Laboratorios Ordesa, SL and Hipp & Co. KG,
THE COURT OF FIRST INSTANCE
OF THE EUROPEAN COMMUNITIES (Seventh Chamber),
composed of N.J. Forwood, President, D. Šváby (Rapporteur) and E. Moavero Milanesi, Judges,
Registrar: N. Rosner, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 18 August 2006,
having regard to the response of OHIM lodged at the Registry of the Court of First Instance on 5 December 2006,
having regard to the response of the intervener lodged at the Registry of the Court of First Instance on 17 November 2006,
further to the hearing on 13 November 2008,
gives the following
Judgment
Background to the dispute
1 On 19 November 2001, the applicant, Hipp & Co. KG, filed an application for a Community trade mark in respect of the word mark Bebimil 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 goods for which registration of the trade mark was sought are in Classes 5, 29, 30 and 32 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, corresponding, for each of those classes, to the following description:
‘pharmaceutical products; dietetic substances for children and invalids, adapted for medical use; food for babies’, in Class 5;
‘meat, fish, poultry and game; meat extracts; meat, fish, fruit and vegetable jellies; jams; eggs, milk and milk products, namely butter, cheese, cream, yoghurt, quark, dried milk for food; ready-to-serve meals, made predominantly of meat, poultry, game, fish, fruit, vegetables, eggs, pulses, potatoes, cereal preparations, rice and/or pasta; meat, fish, poultry, game, vegetable, fruit and milk preserves; all aforesaid goods in particular for dietetic purposes’, in Class 29;
‘tea, tea-based beverages, cocoa, sugar, rice, tapioca, sago, flour and cereal preparations (except foodstuffs for animals), bread, biscuits, cakes, pastries and confectionery, chocolate; children's desserts, in particular sweet dishes, mainly consisting of milk, fruits, sugar, cocoa, chocolate and/or starch; desserts, consisting predominantly of milk, sugar and chocolate, also with all kinds of binding agents, desserts consisting predominantly of fruits; muesli, consisting predominantly of cereals, fruits, nuts and/or sugar; ready-to-serve cereal food, prepared and semi-prepared food of bran, including pastries; all aforesaid goods in particular for dietetic purposes’, in Class 30:
‘non-alcoholic drinks, in particular fruit juices, fruit juice drinks; fruit syrups and other non-alcoholic fruit preparations for making non‑alcoholic beverages; tea; all aforesaid goods in particular for dietetic purposes’, in Class 32.
3 The application for a Community trade mark was published in Community Trade Marks Bulletin No 46/2002 on 10 June 2002.
4 On 9 September 2002, the intervener, Laboratorios Ordesa, SL, filed a notice of opposition under Article 42(1) of Regulation No 40/94 (now Article 41(1) of Regulation No 207/2009) against the trade mark application in question.
5 The opposition was based on the following earlier rights of the intervener:
– Community registration No 41319 of the word mark BLEMIL, registered on 26 May 1998 for goods in Classes 5 and 29 of the Nice Agreement corresponding to the following description: ‘pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use; food for babies; plasters, materials for dressings; material for stopping teeth and dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides’ (Class 5) and ‘meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk and milk products; edible oils and fats’ (Class 29);
– Spanish registration No 432555 of the word mark BLEMIL, registered on 17 May 1965 to designate goods in Class 6 of the former Spanish classification system corresponding to the following description: ‘foodstuffs and dietetic preparations, animal or vegetal extracts and concentrates, preserves of all kinds, products for preserving foods, edible fats and oils, cooked meats, dried and cooked fruit, fruit pulp, powdered eggs, jellies for food, bouillons of all kinds, composed, phosphatised, lacteal and vitaminised flours, milks, cheeses and lacteal by‑products, condiments, sauces and spices’;
– Spanish registration No 1313566 of the word mark BLEMIL 1, registered on 20 July 1990 to designate goods in Class 32 of the Nice Agreement corresponding to the following description: ‘beers, mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’.
6 The opposition was based on all the goods covered by the earlier registrations and was directed against all the goods referred to in the trade mark application. The ground relied in support of the opposition was that set out in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
7 The applicant requested, pursuant to Article 43(2) and (3) of Regulation No 40/94 (now Article 42(2) and (3) of Regulation No 207/2009), that the intervener adduce evidence of use of the earlier Spanish trade marks. The intervener submitted documents as evidence of use of those marks.
8 In its decision of 13 April 2005, the Opposition Division upheld the opposition in so far as it was directed against the goods in Classes 5, 29 and 32 referred to in the application for registration and against the following goods in Class 30, taking the view that they were, in some cases, similar and, in others, identical to those covered by the intervener’s earlier marks and that there was a likelihood of confusion between the marks at issue: ‘tea, tea-based beverages, cocoa, rice, confectionery, chocolate; children's desserts, in particular sweet dishes, mainly consisting of milk, fruits, sugar, cocoa, chocolate and/or starch; desserts, consisting predominantly of milk, sugar and chocolate, also with all kinds of binding agents, desserts consisting predominantly of fruits, muesli, consisting predominantly of cereals, fruits, nuts and/or sugar; ready-to-serve cereal food, prepared and semi-prepared food of bran, including pastries; all aforesaid goods in particular for dietetic purposes’. The Opposition Division rejected the opposition as to the remainder of the goods in Class 30 and in so far as it was based on Spanish registration No 1313566.
9 On 12 May 2005, the applicant filed a notice of appeal against the decision of the Opposition Division in so far as it upheld the opposition.
10 By its decision of 2 June 2006 (‘the contested decision’), the First Board of Appeal rejected the appeal under Article 8(1)(b) of Regulation No 40/94 on the ground that there was a likelihood of confusion between the marks at issue. In essence, it took the view that, while in certain countries the marks could evoke slightly different associations, those differences could not be regarded as sufficient to prevent the marks being considered to be similar, in view of their visual and phonetic similarities.
Forms of order sought by the parties
11 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
12 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the cost.
Law
Admissibility of the annexes to the application
Arguments of the parties
13 As OHIM stated at the hearing, it contests the admissibility only of Annexes 2 and 7 to the application, on the ground that they were not submitted to the Opposition Division or the Board of Appeal. It relies in that connection on Article 135(4) of the Rules of Procedure of the Court of First Instance.
14 Moreover, OHIM submits that, while the applicant submitted to the Opposition Division a list of Community trade marks containing the element ‘mil’, the list of marks in Annex 6 to the application contains a greater number of marks. It does not formally contest the admissibility of the extended list, provided that it does not have an impact on the outcome of the dispute.
15 The applicant submits that account must be taken of all the annexes that were placed on the case‑file. In particular, it claims that Annex 2 to the application simply illustrates a point that is universally acknowledged, namely parents are very circumspect when buying products for their babies or children. The applicant argues that Annexes 6 and 7 to the application do not contain any new factual evidence. However, they afford an opportunity to illustrate the validity of an argument already presented before OHIM.
16 The intervener has not made any observations in that regard.
Findings of the Court
17 As is apparent from the OHIM administrative file, Annexes 2 and 7 to the application, the former of which contains extracts from websites housing discussions on bottle‑feeding and on trade marks for formula milk and the latter print-outs of internet pages concerning the use of marks containing the element ‘mil’, were not submitted in the course of the procedure before OHIM. Accordingly, those documents, produced for the first time before the Court of First Instance, cannot be taken into consideration. The purpose of actions before the Court of First Instance is to review the legality of decisions of the Board of Appeal of OHIM for the purposes of Article 63 of Regulation No 40/94 (now Article 65 of Regulation No 207/2009) and it follows that it is not the Court’s function to review the facts in the light of the documents produced for the first time before it (see, to that effect, Case T‑ 346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR AND FELICIE) [2005] ECR II‑4891, paragraph 19).
18 As regards Annex 6 to the application, which contains examples of trade marks containing the sequence of letters ‘m’, ‘i’ and ‘l’, according to the case‑law cited in the preceding paragraph, it is admissible only in so far as it contains examples of trade marks which have already been submitted in the proceedings before OHIM.
Substance
19 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94.
Arguments of the parties
20 The applicant disputes that there is a likelihood of confusion between the marks at issue.
21 First, the applicant submits, in essence, that it is necessary to take into account the relevant public throughout the European Union. It states that all European languages must be taken into account on an equal footing. According to the applicant, only the trade mark applied for contains a clear allusion to the word ‘baby’, the Board of Appeal having erred in taking the view that the prefix ‘ble’ of the earlier mark evokes a similar association in so far as it was said to mean ‘napkin’ in Danish, that is to say, a word closely associated with babies.
22 With regard in particular to ‘formula milk’ and ‘food for babies’, it submits that the relevant consumers, namely the parents of babies and young children who are concerned for the welfare of their offspring, must be regarded as paying a very high level of attention when purchasing such products.
23 Second, the applicant maintains that the marks at issue differ visually, phonetically and conceptually.
24 In particular, it argues that there are very clear visual and phonetic differences between those marks which cannot be totally disregarded.
25 The applicant makes the point that in short marks the additional syllables are quite noticeable. It therefore submits, first, that the middle syllable ‘bi’ of the mark applied for has a prominent phonetic and visual role in the overall impression given. Second, the marks at issue are distinguishable from each other phonetically by the number of syllables, the rhythm when they are spoken and the sequence of vowels. Those features have greater impact on the overall phonetic impression given by the marks than the sequence of letters which they contain.
26 From the conceptual point of view, according to the applicant, the marks at issue do not have similar evocative elements. It maintains, first, that the prefix ‘bebi’ of the mark applied for is perceived as corresponding to ‘baby’ in all European countries, the latter being a basic English word which also exists in other European languages. By contrast, the earlier mark cannot be associated with any obvious word in the main European languages. It submits that the meaning of the element ‘ble’ in Danish is irrelevant in terms of how it is perceived by European consumers in general and Spanish consumers in particular and that this involves a very contrived reference to young children.
27 Next, the applicant submits that the suffix ‘mil’ does not play a decisive role in the overall impression given by the marks at issue or in the global assessment of the likelihood of confusion in view of, first, the fact that it comes at the end of the word and, second, its power to evoke the English word ‘milk’ and the German word ‘milch’. According to the applicant, contrary to the finding of the Board of Appeal, that allusion to milk products would also be understood in Spain, since the English word ‘milk’ is a basic word. In its view, that it also the reason for which the intervener chose to register the Spanish mark BLEMIL, which covers only ‘formula milk’.
28 Moreover, since the suffix ‘mil’ is frequently used for milk products, foodstuffs or pharmaceutical products in Classes 5, 29, 30 and 32, it has only weak distinctive character in the marks at issue and is not the dominant element of those marks. According to the applicant, the fact that they share the weak ending ‘mil’ does not make the marks similar, since the first components of the marks play a decisive role.
29 Lastly, the applicant claims that the clear conceptual differences between the marks counteract any phonetic or visual similarity. It concludes that there would be no likelihood of confusion between the marks for the relevant public, even if they were used for the same or similar products.
30 OHIM and the intervener contest the applicant’s arguments.
Findings of the Court
31 Under Article 8(1)(b) of Regulation No 40/94, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with or similarity to the 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.
32 According to settled case‑law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically‑linked undertakings constitutes a likelihood of confusion (see judgment of 25 June 2008 in Case T‑36/07 Zipcar v OHIM – Canary Islands Car (ZIPCAR), not published in the ECR, paragraph 27 and the case‑law cited).
33 According to that case‑law, the global assessment of the likelihood of confusion must, as far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by them, bearing in mind, inter alia, their distinctive and dominant components (ZIPCAR, paragraph 28).
34 In the present case, it should be noted, first, that it is apparent from the contested decision, in particular paragraphs 23, 25, 30 to 45 and 48 thereof, that the Board of Appeal assessed the likelihood of confusion only between the mark applied for and the earlier Community trade mark. According to the Board of Appeal, there was no point in assessing whether the intervener had demonstrated use of its earlier Spanish mark for ‘formula milk’ in view of the fact that there was no requirement of proof of use of the earlier Community trade mark when the notice of opposition was filed and that mark covered a wide range of products in Classes 5 and 29, including ‘food for babies’ and ‘milk and milk products’ (paragraph 25 of the contested decision).
35 As regards the comparison of the goods in question, it is not disputed that the products protected by the earlier Community mark are, in some cases, identical with and, in others, similar to the goods for which the application for registration was rejected.
36 With regard to the relevant public, the Board of Appeal considered that the goods designated by the marks at issue can be bought by professionals or by the general public (paragraphs 24 and 47 of the contested decision) and confined its assessment of the likelihood of confusion to the perception of the general public (paragraph 48 of the contested decision).
37 The applicant challenges that conclusion only in so far as the Board of Appeal considers that the relevant public is deemed to consist of consumers who are reasonably well informed and reasonably observant and circumspect. The applicant submits that, with regard in particular to ‘formula milk’ and ‘food for babies’ and in so far as the average consumers are prudent and provident parents as regards their children, the level of attention of the average consumer is higher than is the case when every-day consumer goods are being purchased.
38 It should be pointed out that, according to established case‑law, the perception of marks in the mind of the average consumer of the category of goods or services in question plays a decisive role in the global assessment of the likelihood of confusion (see Case C‑361/04 P Ruiz‑Picasso and Others v OHIM [2006] ECR I‑643, paragraph 36 and the case‑law cited). For the purpose of that assessment, it must be borne in mind, inter alia, that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (Ruiz Picasso and Others v OHIM, paragraph 38 and the case‑law cited).
39 With regard to the applicant’s claim that the level of attention of the relevant consumers is very high when they purchase ‘formula milk’, it must be noted that the marks at issue do not cover that category of products but the ‘milk and milk products’ category in Class 29, which is clearly intended for a reasonably well informed and reasonably observant and circumspect public.
40 As regards ‘food for babies’, it is undoubtedly true, as the applicant maintains, that the parents of babies or young children pay a higher degree of attention when purchasing products for babies because of the importance they attach to nutrition and health for babies. However, in view of the extensive range of ‘food for babies’ goods, it must be held, as found by OHIM, that while the group of average consumers for that category of goods, as identified, will also include careful parents, it will not any way consist exclusively of such consumers.
41 It must therefore be concluded that the Board of Appeal did not err in considering that all the goods in question are aimed at the general public, which is deemed to consist of consumers who are reasonably well informed and reasonably observant and circumspect.
42 As regards the relevant geographical area, the Board of Appeal took account of the public in all the countries of the European Union. That area is not disputed.
43 With regard to the comparison of the signs, 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 (see Case T‑286/02 Oriental Kitchens v OHIM – Mou Dybfrost (KIAP MOU) [2003] ECR II‑4953, paragraph 38 and the case‑law cited).
44 In the present case, the applicant disputes the assessments made by the Board of Appeal concerning the visual, phonetic and conceptual aspects.
45 As regards the visual aspect, the Board of Appeal pointed out, at paragraph 27 of the contested decision, that the marks at issue share the first letter ‘b’ and the suffix ‘mil’. Moreover, they share the same vowel in the first syllable, namely ‘e’. According to the Board of Appeal, those similarities and the fact that the marks are of almost the same length create a similar visual impression.
46 The Court finds that the fact that the first letter (‘b’) and the last component (‘mil’) of the marks at issue are the same and that the marks both contain the sequence of letters ‘b’, ‘e’, ‘m’, ‘i’ and ‘l’ and are of similar length confirms the assessment of the Board of Appeal as to the visual similarity of the marks, which cannot be called into question by the existence of the additional middle syllable ‘bi’ in the mark applied for.
47 Whilst not visually insignificant, that middle syllable is not dominant, contrary to what the applicant claims, notwithstanding its assertion that, first, it contains a prominent vowel – ‘i’ – and, second, in short marks additional syllables are quite noticeable. It should be pointed out that, according to case‑law, in relatively short word signs, the elements at the beginning and end of the sign are as important as the central elements (see, to that effect, judgment of 21 October 2008 in Case T‑95/07 Aventis Pharma v OHIM – Nycomed (PRAZOL), not published in the ECR, paragraph 43 and the case‑law cited). Moreover, the syllable ‘bi’ does not appear in the first part of the word, the part which is likely, in some cases, to retain the consumer’s attention more than the following parts of a word mark (see, to that effect, Joined Cases T‑183/02 and T‑184/02 El Corte Inglés v OHIM – González Cabello and Iberia Líneas Aéreas España (MUNDICOR) [2004] ECR II‑965, paragraph 81). Moreover, the applicant has failed to produce any evidence enabling it to be established that, notwithstanding the foregoing considerations, that syllable is particularly distinctive in the trade mark applied for.
48 With regard to the phonetic aspect, the Board of Appeal found, at paragraph 27 of the contested decision, that the marks are similar because they have a common suffix and because the only difference between the first syllables of both marks is the letter ‘l’, which does not have a highly distinctive character in the earlier mark.
49 First, contrary to what the applicant claims, the articulation of the middle syllable ‘bi’ of the mark applied for cannot be regarded as sufficient to enable the overall impressions given by the marks to be distinguished from each other, given that the first and last syllables of the mark applied for and those of the earlier mark are, in the case of the first syllable, phonetically similar and, in the case of the last, identical.
50 As regards the applicant’s reference to the judgment of the German Federal Court of Justice, which found that there was no likelihood of confusion between the marks CompuNet and ComNet because the middle syllable ‘pu’ of the mark CompuNet enabled the mark at issue to be sufficiently distinguished, it is sufficient to observe that, according to established case‑law, the Community trade mark regime is an autonomous system, comprising a set of rules and pursuing objectives which are peculiar to it, and it applies independently of any national system (see, to that effect, Case T‑29/04 Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH) [2005] ECR II‑5309, paragraph 75). Moreover, the German judgment in question concerns the comparison of other marks and a different factual background, which distinguishes the analysis carried out in that judgment from that in the present case.
51 Second, contrary to the applicant’s claims, the fact that the marks at issue have a different number of syllables and a different rhythm when they are spoken or that the mark applied for contains the vowel sequence ‘e’, ‘i’ and ‘i’ cannot be regarded as having a greater impact on the overall phonetic impression than the factors referred to by the Board of Appeal (see paragraph 48 above).
52 It must be held, as was found by the Board of Appeal, that the elements of phonetic similarity between the signs at issue prevail over the elements of dissimilarity, so that, viewed as a whole, the signs are similar.
53 With regard to the conceptual aspect, the Board of Appeal stated at paragraph 28 of the contested decision that the prefix ‘bebi’ of the mark applied for could be associated with ‘baby’ in all European countries in which English is spoken or understood. In its opinion, the prefix ‘ble’ of the earlier mark could evoke a similar association in Danish, given that the element ‘ble’ means ‘napkin’, which is word that is closely associated with babies. As regards the suffix ‘mil’, the Board of Appeal found, in essence, that it was fanciful, at the very least in so far as concerns all products other than milk products and that, as a result, it was neither descriptive nor lacking in distinctive character, though possibly allusive in English and/or German-speaking countries. Moreover, according to the Board of Appeal, any allusion there may be would be the same for both the marks at issue, which reinforces the similarity between them. Lastly, the element ‘mil’ does not allude to the word ‘milk’ in Spain.
54 The applicant submits that there are clear conceptual differences between the marks at issue which counteract any phonetic or visual similarity.
55 It should be noted that both the earlier Community trade mark and the mark applied for are word marks consisting of a single invented word. Accordingly, while the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, he will nevertheless, perceiving a word sign, break it down into verbal elements which, for him, suggest a concrete meaning or which resemble words known to him (see, to that effect, judgment of 14 February 2008 in Case T‑189/05 Usinor v OHIM – Corus (UK) (GALVALLOY), not published in the ECR, paragraph 62 and the case‑law cited).
56 First, as regards the applicant’s claim that the suffix ‘mil’ plays a ‘very minor’ role in the overall assessment of the marks at issue, in the light of its power to evoke the English word ‘milk’ and the German word ‘milch’, even if it is accepted that the English word ‘milk’ may be regarded, as the applicant maintains, as a basic English word that is understood by consumers in the majority of the Member States of the European Union, the fact remains that, in the marks at issue, the word ‘milk’ does not appear in its entirety but simply the group of letters ‘mil’, which, moreover, form part of a longer word, namely ‘bebimil’ or ‘blemil’, and do not clearly form a distinct part of that word. Accordingly, the fact that the suffix ‘mil’ is close to the English word ‘milk’ and the German word ‘milch’, meaning ‘milk’, and that it has the same root does not necessarily mean that it will be associated with the same idea (see, by analogy, judgment of 26 June 2008 in Case T‑79/07 SHS Polar Sistemas Informáticos v OHIM – Polaris Software Lab (POLARIS), not published in the ECR, paragraph 44).
57 In particular, as OHIM concluded, there cannot be presumed to be such an association since the categories of goods covered by the earlier mark, on which the opposition is based, encompass categories other than ‘milk and milk products’ (see paragraph 5 above). It should be noted in that connection that, according to case‑law, the assessment of the distinctiveness of a sign must be carried out having regard to the products which form the basis of the opposition (Case T‑186/02 BMI Bertollo v OHIM – Diesel (DIESELIT) [2004] ECR II‑1887, paragraph 54).
58 As regards ‘milk and milk products’, some consumers must, admittedly, be regarded as being able to understand the suffix ‘mil’ as an allusion to such products. However, according to established case-law, the effect of a suffix that is common to two marks is to make them conceptually closer, notwithstanding the limited distinctiveness the suffix may have in relation to the goods in question (see, to that effect, ZIPCAR, paragraph 46, and the judgment of 15 October 2008 in Joined Cases T‑305/06 to T-307/06 Air Products and Chemicals v OHIM – Messer Group (Ferromix, Inomix and Alumix), not published in the ECR, paragraphs 59 and 60). The Board of Appeal was therefore correct in finding that any allusion there may be would be the same for both marks and that factor reinforces the similarity between them.
59 Second, as regards the applicant’s assertion that the suffix ‘mil’ has a weak distinctive character in the marks at issue since it is also to be found in other Community trade marks, no evidence has been produced to demonstrate that such marks containing the element ‘mil’, relied on by the applicant, have actually been used, except for evidence produced belatedly before the Court, which is therefore inadmissible. The simple fact that a number of marks relating to the classes of products in issue in the present case contain the element ‘mil’ is not sufficient to establish that the distinctive character of that element has been weakened because of its frequent use in the field concerned (see, by analogy, Case T‑135/04 GfK v OHIM – BUS (Online Bus) [2005] ECR II-4865, paragraph 68; CRISTAL CASTELLBLANCH, paragraph 71; and judgment of 12 March 2008 in Case T‑341/06 Compagnie générale de diététique v OHIM (GARUM), not published in the ECR, paragraph 43). Moreover, the Community trade marks containing the suffix ‘mil’ put forward by the applicant by way of example relate only to certain products protected by the earlier mark and are therefore incapable in any event of having any effect on the distinctive character of the suffix ‘mil’, since that mark also relates to other products.
60 Third, nor can it be inferred, as the applicant contends, from the position of the element ‘mil’ at the end of the marks at issue that it necessarily retains the consumer’s attention less than the first part of the marks. While, as a rule, more attention is given to the first part of word marks, that argument cannot, in any event, hold in all cases and does not cast doubt on the principle that the assessment of the similarity of marks must take account of the overall impression created by those marks (see, to that effect, judgment of 16 May 2007 in Case T‑158/05 Trek Bicycle v OHIM – Audi (ALLTREK), not published in the ECR, paragraph 70 and the case‑law cited). Furthermore, as already stated at paragraph 47 above, the beginning, middle and end components of relatively short word signs are all equally important.
61 In the light of the foregoing, the Board of Appeal was correct in finding that the element ‘mil’ is neither descriptive nor lacking in distinctive character in the marks at issue, though possibly allusive and, if so, the allusion is the same for both marks, which reinforces the similarity between them.
62 Fourth, with regard to the applicant’s claim that the prefix ‘bebi’ of the mark applied for would be associated with the English word ‘baby’ in virtually all countries of the European Union and that the mark would therefore also be associated with the word ‘baby’, it must noted, first, that it has already been found that the meaning of the word ‘baby’ is understood even by a non‑English speaking consumer, in particular a Spanish consumer (see, to that effect, Case T‑133/05 Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP) [2006] ECR II‑2737, paragraph 52). Second, with regard to the dictionary extracts containing the translation of the English word ‘baby’ into Dutch, German, Swedish, Danish, Spanish, French and Portuguese produced by the applicant as Annex 5 to the application, it must be noted that the English word ‘baby’ is understood by the public speaking those languages. In fact, it is apparent from those extracts that in Dutch, German, Swedish and Danish the word ‘baby’ is in current use and in Spanish, French and Portuguese the corresponding word is similar (‘bebé’, ‘bébé’ and ‘bebê’, respectively).
63 However, the mark applied for does not contain the word ‘baby’ but a fanciful word, which is more removed and without any clear and specific meaning, that is to say, ‘bebi’. In addition, that component constitutes simply the prefix of the mark and not the mark itself, whereas the existence of a conceptual similarity between opposing marks must be assessed on the basis of the evocative force that may be found in each of them taken as a whole (MUNDICOR, cited at paragraph 47, paragraph 90). The mark applied for, taken as a whole, cannot be regarded as having a clear meaning that can be easily understood by consumers.
64 That conclusion holds good for all the goods covered by the trade mark application. Admittedly, for some of those goods which are milk-related, such as ‘milk and milk products’, ‘dried milk for food’, ‘milk preserves’ and ‘children’s desserts … mainly consisting of milk’, the suffix ‘mil’ could be understood as alluding to milk and the prefix ‘bebi’ could allude to babies. The trade mark applied for could therefore be perceived by some consumers as a word which, while it does not have a clear and specific meaning, nevertheless evokes, for example ‘milk for children’. However, even if, as a result of that association, the mark applied for differs somewhat conceptually from the earlier mark, there nevertheless remains a conceptual link between them, consisting in their common suffix evoking ‘milk’, which limits that difference (see, by analogy, ZIPCAR, paragraph 46, and Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 58).
65 As regards goods covered by the trade mark application other than those referred to in the preceding paragraph, the suffix ‘mil’ has no meaning and no power of suggestion, so that the trade mark applied for is, as a whole, ultimately deprived of any particular conceptual content, notwithstanding the fact that its prefix ‘bebi’ has a certain evocative force. As OHIM pointed out at the hearing, the evocative force of the prefix ‘bebi’ may also be further weakened in certain countries such as Spain, since that word may be perceived there as referring to the Spanish verb ‘beber’, meaning ‘to drink’.
66 Moreover, some consumers may not understand the component ‘mil’ as an allusion to milk or the component ‘bebi’ as an allusion to babies, especially if they do not understand basic English or German, or as a result of the fact, as pointed out by OHIM, that the prefix ‘bebi’ is visually and phonetically different from the word ‘baby’ and that in Spain, for example, the word for milk is ‘leche’ and the word ‘mil’ means ‘thousand’ (paragraph 28 of the contested decision). For that category of consumers, the two marks at issue are fanciful and do not have any conceptual content. No conceptual similarity or difference can therefore be established between the two marks (see, to that effect, ZIPCAR, paragraph 45).
67 Furthermore, the applicant’s claim that the prefix ‘ble’ of the earlier mark may be understood as meaning ‘blé’, namely ‘wheat’, by the French‑speaking public is irrelevant. First, it is accepted that the relevant public is that of the whole European Union and not simply the French‑speaking public. Second, even for the latter, no clear meaning capable of being immediately understood can be ascribed to that mark as a whole.
68 Similarly, the applicant’s assertion that the Board of Appeal erred in focusing on the meaning of the word ‘ble’ in Danish is also irrelevant. Any such error is incapable of invalidating the assessment that, from a conceptual point of view, no comparison is possible.
69 In the light of the foregoing, the applicant’s argument that the conceptual differences between the marks are such as to counteract their visual and phonetic similarities must be regarded as unfounded. Moreover, according to established case‑law, for there to be such a counteraction, at least one of the marks at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately and the other mark must have no such meaning or an entirely different meaning (MUNDICOR, paragraph 93, and Case T‑185/02 Ruiz-Picasso and Others v OHIM – Damiler Chrysler (PICARO) [2004] ECR II‑1739, paragraph 56).
70 With regard to the likelihood of confusion, according to settled case‑law, the 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 that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (see ZIPCAR, paragraph 30 and the case‑law cited).
71 In view of the fact that some of the goods protected by the earlier mark are identical with and others similar to those in respect of which the trade mark application was rejected and taking account of the visual and phonetic similarities between the marks, which, contrary to the applicant’s assertion, are not counteracted by conceptual differences, given that the marks at issue, taken as a whole, do not have any specific meaning, the Court considers that the Board of Appeal was correct in concluding in the contested decision that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 between the marks at issue, at the very least among general public.
72 In view of those visual and phonetic similarities and the fact that it cannot be established that those similarities are counteracted and having regard to the principle of interdependence referred to above, that conclusion also applies to the ‘food for babies’ category of products, even bearing in mind that some consumers may pay greater attention when purchasing some of those products.
73 The likelihood of confusion is reinforced by the fact that the relevant public only rarely has the chance to make a direct comparison between the different marks and must rely on an imperfect recollection of them (Case T‑154/03 Biofarma v OHIM – Bausch & Lomb Pharmaceuticals (ALREX) [2005] ECR II‑4743, paragraph 60).
74 It follows that the single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94, is unfounded and that the action must therefore be dismissed.
Costs
75 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs, if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and the intervener.
On those grounds,
THE COURT OF FIRST INSTANCE (Seventh Chamber)
hereby:
1. Dismisses the action;
2. Orders Hipp & Co. KG to pay the costs.
Forwood | Šváby | Moavero Milanesi |
Delivered in open court in Luxembourg on 16 September 2009.
[Signatures]