JUDGMENT OF THE GENERAL COURT (Fifth Chamber)
16 December 2015 (*)
(Community trade mark — Opposition proceedings — Application for Community word mark TRIDENT PURE — Earlier Community, national, international and Benelux figurative and word marks PURE WHITE, mentos PURE FRESH PURE BREATH, PURE, PURE FRESH, mentos PURE FRESH and mentos PURE WHITE — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑491/13,
Perfetti Van Melle Benelux BV, established in Breda (Netherlands), represented by P. Perani, G. Ghisletti and F. Braga, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by L. Rampini, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Intercontinental Great Brands LLC, established in East Hanover, New Jersey (United States), represented by M. Haak, lawyer,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 9 July 2013 (Case R 706/2012-4) concerning opposition proceedings between Perfetti Van Melle Benelux BV and Kraft Foods Global Brands LLC,
THE GENERAL COURT (Fifth Chamber),
composed of A. Dittrich (Rapporteur), President, J. Schwarcz and V. Tomljenović, Judges,
Registrar: A. Lamote, Administrator,
having regard to the application lodged at the Registry of the General Court on 11 September 2013,
having regard to the response of OHIM lodged at the Court Registry on 13 December 2013,
having regard to the response of the intervener lodged at the Court Registry on 17 December 2013,
having regard to the reply lodged at the Court Registry on 5 May 2014,
having regard to the rejoinder of the intervener lodged at the Court Registry on 11 August 2014,
further to the hearing on 3 September 2015,
gives the following
Judgment
Background to the dispute
1 On 16 August 2010 the intervener, Kraft Foods Global Brands LLC, now Intercontinental Great Brands LLC, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 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 TRIDENT PURE.
3 The goods in respect of which registration was sought fall within Class 30 of the Nice Agreement on the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Non-medicated confectionery, sugar confectionery including mints’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 180/2010 of 24 September 2010.
5 On 22 December 2010 the applicant, Perfetti Van Melle Benelux BV, filed a notice of opposition under Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the following earlier marks:
– Community figurative mark No 6771869 in black and white, filed on 21 March 2008 and registered on 30 September 2008, in respect of goods in Class 30 corresponding to the following description: ‘Pastry and confectionery; candies; chew candies; caramel; chewing gum; bubble gum; drops; gumdrops; lollipops; jellies; liquorice; toffee; sweets; mints; ices; chocolate; cocoa; sugar’, reproduced below:
– Community figurative mark No 8813487 in black and white, filed on 15 January 2010 and registered on 20 June 2010, in respect of goods in Class 30 corresponding to the following description: ‘Pastry and confectionery; candies; chew candies; caramel; chewing gum; bubble gum; drops; gumdrops; lollipops; jellies (confectionery); liquorice; toffee; sweets; mints; chocolate; cocoa; sugar’, reproduced below:
– Community figurative mark No 9291634 in white, light blue, blue and green, filed on 3 August 2010 and registered on 24 December 2010, in respect of goods in Class 30 corresponding to the following description: ‘Sugar; pastry; confectionery; candies; chew candies; drops; gumdrops; caramel; chewing gum; bubble gums; lollipops; liquorice; jellies (confectionery); toffee; mints; sweets; chocolate; cocoa’, reproduced below:
– French word mark No 63431610 PURE FRESH, filed on 30 May 2006 and registered on 3 November 2006, in respect of goods in Class 30 corresponding to the following description: ‘Pastry and confectionery; candies; chew candies; drops (confectionery); bubble gum; caramel; chocolate; cacao; chewing gums; peppermint sweets; liquorice; lollipops; jellies (confectionery); toffees; sweets (confectionery); sugar; ice creams’;
– international figurative mark No 932886 in various shades of blue and white, registered on 18 June 2007, with effect in, inter alia, Bulgaria, the Czech Republic, Denmark, Germany, Greece, Spain, France, Hungary, Poland, Portugal, Slovenia, Slovakia, Finland and Sweden, in respect of goods in Class 30 corresponding to the following description: ‘Pastry and confectionery; candies; chew candies; caramel; chewing gum; bubble gum; sour drops [candies]; gumdrops; lollipops; drops in the shape of bears; jellies; liquorice [confectionery]; toffees; sweets; peppermint sweets; ice creams; sugar; chocolate; cacao’, reproduced below:
– Italian figurative mark No 1280532 in black and white, filed on 8 November 2007 and registered on 29 April 2010, in respect of goods in Class 30 corresponding to the following description: ‘Pastry and confectionery; candies; chew candies; chewing gum; lollipops; jellies; toffees; liquorice; chocolate; sweets; caramel; mints; ice creams; sugar’, reproduced below:
– Benelux figurative mark No 820421 in various shades of blue and white, filed on 19 March 2007 and registered on 7 June 2007, in respect of goods in Class 30 corresponding to the following description: ‘Pastry and confectionery; candies; chew candies; caramel; chewing gum; bubble gum; sourdrops (candies); gumdrops; lollipops; drops in the shape of bears; jellies; liquorice (confectionery); toffees; sweets; mints; ice creams; sugar; chocolate; cacoa’, reproduced below:
– Benelux figurative mark No 864652 in black and white, filed on 5 June 2009 and registered on 10 September 2009, in respect of goods in Class 30 corresponding to the following description: ‘Pastry and confectionery; candies; chew candies; drops; gumdrops; caramel; chocolate; cocoa; chewing gum; bubble gum; mints; liquorice (confectionery); lollipops; jelly little bears; toffees; sweets; sugar’, reproduced below:
7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.
8 On 10 February 2012 the Opposition Division upheld the opposition on the ground that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, between the mark applied for and Community figurative mark No 9291634 in relation to the goods covered by the application.
9 On 5 April 2012 the intervener filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
10 By decision of 9 July 2013 (‘the contested decision’) and on the ground that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, the Fourth Board of Appeal of OHIM upheld the appeal and annulled the Opposition Division’s decision.
11 In essence, the Board of Appeal took the view that the word element ‘pure’ featuring in all the marks at issue was perceived by a part of the relevant public, that is to say, in particular by consumers in English-, French-, Italian-, German-, Dutch-, Portuguese-, Spanish- and Romanian-speaking areas, as being a reference to the freshness or purity of the goods sold and, therefore, as a mere description of those goods. For those consumers who do not understand the meaning of the word ‘pure’, that is to say, in particular, those not from the aforementioned linguistic areas, the element ‘pure’, the Board of Appeal found, has an average level of distinctiveness.
12 With regard to the mark applied for, the element ‘trident’ is, according to the Board of Appeal, the more distinctive and dominant element for consumers who understand the word ‘pure’. For those who do not, the elements ‘pure’ and ‘trident’ are equally distinctive, the latter element nevertheless being dominant because of its initial position in the mark applied for. The distinctiveness of the mark applied for is, at most, normal.
13 The relevant public, according to the Board of Appeal, is the general public in the European Union demonstrating a normal level of attention.
14 The Board of Appeal found that the goods covered by the mark applied for and those covered by the earlier marks are identical.
15 On the basis of those considerations, the Board of Appeal compared the marks at issue and carried out a global assessment of the likelihood of confusion between each of the earlier marks and the mark applied for.
16 As regards the comparison between the mark applied for and Community figurative mark No 9291634, the Board of Appeal took the view that, visually, those marks were dissimilar for those who understood the meaning of the word ‘pure’ and similar to a low degree for those who did not, while, phonetically, the marks were of low similarity for the former group and of average similarity for the latter group. Conceptually, the fact that the word ‘pure’ refers to a quality of the goods at issue was, owing to its descriptive nature, relevant only for those consumers who knew the meaning of that element, whereas, for those who did not, the conceptual comparison remained neutral. In the global assessment of the likelihood of confusion, the Board of Appeal concluded that there was no such likelihood even for consumers who did not understand the word ‘pure’, taking the view that the intrinsic distinctiveness of the earlier mark was not above average and that the visual similarity had special significance owing to the fact that the goods at issue were bought on sight. In addition, the applicant had not demonstrated to the requisite legal standard that the earlier trade mark possessed enhanced distinctiveness on account of its use or that there was a family of trade marks based on the element ‘pure’.
17 So far as concerns the comparison between the mark applied for and Community figurative mark No 6771869, the Board of Appeal found those marks to be visually dissimilar and of low phonetic similarity for those consumers who understood the words ‘white’ and ‘pure’, the latter element not being relevant for the purposes of a conceptual comparison on account of its descriptive nature. For that part of the relevant public, the distinctive character of the earlier mark lay purely in its graphic design and was only very low. The same was true of those consumers who understood the word ‘pure’, but not the word ‘white’, since ‘white’ was the most distinctive and dominant element of the earlier mark for that category of the relevant public. Lastly, for consumers who understood neither ‘pure’ nor ‘white’, those marks were visually similar to a low degree, phonetically similar to an average degree and conceptually neutral. For those consumers, the distinctiveness of the earlier mark was average and the two word elements would be perceived as being co-dominant. For the purposes of the global assessment of the likelihood of confusion, the Board of Appeal essentially referred to the considerations set out in the comparison between the mark applied for and Community figurative mark No 9291634 and concluded that there was no such likelihood for any category of consumers examined.
18 As regards the comparison between the mark applied for and French word mark No 63431610, PURE FRESH, the Board of Appeal found that the French consumer would perceive the word ‘pure’ as a description of the goods at issue and that those marks were, at most, visually and phonetically similar to a low degree, whereas the element ‘pure’ was not relevant for the purposes of the conceptual comparison. Taking into account the fact that the distinctiveness of the earlier mark ranged from very low to average, depending on whether the consumer understood the word ‘fresh’, and referring to its earlier reasoning, the Board of Appeal concluded that there was no likelihood of confusion.
19 With regard to the comparison between the mark applied for and Community figurative mark No 8813487, Italian figurative mark No 1280532 and Benelux figurative mark No 864652, the Board of Appeal referred to its earlier reasoning while pointing out that, in those earlier marks, the element ‘mentos’ was the most distinctive and dominant element, which rendered the degree of similarity between those marks and the mark applied for even lower, if not non-existent, in relation to the other marks examined.
20 Lastly, the Board of Appeal observed that the existence of international registration No 932886 and of Benelux trade mark No 820421 had not been proved by the applicant in the forms imposed by Rule 19(2)(a)(ii) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), and that, consequently, the opposition based on those marks had to be rejected under Rule 20 of that regulation. The Board of Appeal noted, for the sake of completeness, that, for the reasons already set out in the other comparisons, there was no likelihood of confusion between those marks and the mark applied for.
Forms of order sought by the parties
21 The applicant claims that the Court should:
– alter the contested decision in its entirety;
– in consequence, reject the application for registration of the trade mark applied for;
– order OHIM and the intervener to pay the costs, including the costs of the appeal and opposition proceedings before OHIM.
22 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
23 At the hearing, the applicant clarified that the form of order which it sought was to be interpreted as seeking the annulment of the contested decision.
Law
24 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
25 The applicant contends that the goods at issue are identical and that the signs at issue are visually, phonetically and conceptually very similar, since the word element ‘pure’ is not descriptive but, on the contrary, highly distinctive, particularly for the part of the relevant public that does not understand the term ‘pure’. Purity, it argues, is not a characteristic of the goods covered by the earlier trade marks. In addition, the word element ‘pure’ dominates figurative mark No 9291634, given the low degree of distinctiveness of the figurative element representing a mint leaf, which, moreover, is a descriptive element as it refers to the flavour of the chewing gum. Furthermore, the word element ‘pure’ refers to a family of PURE trade marks belonging to the applicant. The distinctiveness of that element is enhanced by virtue of its intensive use by the applicant. The element ‘trident’ in the mark applied for is not sufficient to create a visual dissimilarity between the marks.
26 With regard to the marks cited in opposition that also contain the element ‘mentos’ (Community figurative mark No 8813487, international figurative mark No 932886, Italian figurative mark No 1280532 and Benelux figurative marks No 820421 and No 864652), the applicant submits that the consumer will not take account of the main brand mentos, to which he is already well accustomed, but will focus his attention on the element ‘pure’, as the other word elements ‘fresh’ and ‘white’ are devoid of any distinctive character, given that they merely describe the nature and quality of the goods marketed under those marks. In its view, had the Board of Appeal correctly applied the case-law and, in particular, its own guidelines, and taken into consideration its own decision-making practice as well as the fact that the phonetic resemblance of the marks at issue is particularly important for over-the-counter sales of the goods at issue and, in particular, for marketing those goods through television and radio advertising, it would have concluded that there was a likelihood of confusion.
27 OHIM and the intervener contest those arguments.
28 According to Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.
29 Pursuant to Article 8(2)(a)(i) to (iii) of Regulation No 207/2009, earlier trade marks are Community trade marks, trade marks registered in a Member State, or, in the case of Belgium, the Netherlands or Luxembourg, at the Benelux Office for Intellectual Property, and trade marks registered under international arrangements which have effect in a Member State, with a date of application for registration which is earlier than the date of application for registration of the trade mark applied for. Accordingly, all the marks on which the applicant bases its opposition are capable of being ‘earlier marks’ within the meaning of Article 8 of Regulation No 207/2009.
30 In that regard, it should be noted that, for the purposes of the opposition proceedings, the party that invokes an earlier mark has the obligation of proving the existence, validity and scope of its protection, in accordance with Rule 19(2) of Regulation No 2868/95. The Board of Appeal found that the existence of international registration No 932886 and of Benelux trade mark No 820421 had not been proved by the applicant in the forms imposed by Rule 19(2)(a)(ii) of Regulation No 2868/95 and that, consequently, the opposition based on those marks had to be rejected under Rule 20 of that regulation. However, the applicant does not argue by its present action that there has been an infringement of Rule 19 or Rule 20 of that regulation. Nor does the applicant challenge the Board of Appeal’s reasoning in that regard. Consequently, it must be held that there is no need to examine whether there is a likelihood of confusion between those marks and the mark applied for and likewise that there is no need to rule on whether the Board of Appeal’s conclusion was correct.
31 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question, and taking account of all factors relevant to the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
1. The relevant public and its level of attention
32 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods 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 judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and the case-law cited).
33 In the present case, the Board of Appeal correctly found, and has not been challenged on this point by the parties, that the relevant public, for the purposes of the comparison between the mark applied for and the earlier Community marks, was the general public in all the Member States of the European Union, that the relevant public to be taken into account for the purposes of the comparison between the mark applied for and the earlier national trade marks was the general public in the Member States concerned, and that the level of attention of the general public had to be regarded as being average at both national level and EU level.
2. The comparison of the goods
34 The Board of Appeal also correctly took the view, and has not been challenged by the parties, that the goods at issue were identical to the goods covered by the earlier marks.
3. The comparison of the signs and the likelihood of confusion
35 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by those signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).
36 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks at issue as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see judgment in OHIM v Shaker, paragraph 35 above, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgment in OHIM v Shaker, paragraph 35 above, EU:C:2007:333, paragraph 42).
37 According to well-established case-law, in the assessment of the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the inherent qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgments of 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 35, and of 18 June 2013 in Rocket Dog Brands v OHIM — Julius-K9 (K9 PRODUCTS), T‑338/12, EU:T:2013:327, paragraph 23).
38 It should also be noted that descriptive elements of a trade mark are not generally regarded by the public as being dominant in the overall impression conveyed by that mark, unless, particularly because of their position or their size, they appear likely to make an impression on the public and to be remembered by them. This does not mean, however, that the descriptive elements of a mark are necessarily negligible in the overall impression conveyed by that mark. It is necessary, in particular, to examine whether other elements of the mark are likely to dominate, by themselves, the relevant public’s recollection of that mark (see judgment of 3 September 2010 in Companhia Muller de Bebidas v OHIM — Missiato Industria e Comercio (61 A NOSSA ALEGRIA), T‑472/08, ECR, EU:T:2010:347, paragraph 49 and the case-law cited).
39 It is in the light of those principles that, first of all, it is necessary to examine the distinctiveness of the word element ‘pure’, which appears in all the marks at issue, and the relative weight of the elements ‘trident’ and ‘pure’ in the mark applied for, before carrying out a specific comparison and an assessment of the likelihood of confusion between the mark applied for and each of the earlier marks for the goods at issue.
The distinctiveness of the word element ‘pure’
40 The Board of Appeal found that this element was perceived by a part of the relevant public, in particular by consumers in English-, French-, Italian-, German-, Dutch-, Portuguese-, Spanish- and Romanian-speaking areas, as being a reference to the freshness or purity of the goods sold and, therefore, as a mere description of those goods. By contrast, for those consumers who do not understand the meaning of the word ‘pure’, namely those not from the aforementioned linguistic areas, the element ‘pure’ has an average level of distinctiveness.
41 The applicant submits that the word element ‘pure’ has no obvious connection with the goods in question. Given that that element, which is part of a family of marks belonging to the applicant, is used intensively, its distinctiveness is, in the applicant’s view, even greater.
42 OHIM and the intervener contest those arguments.
43 According to the case-law, a sign is descriptive if there is a sufficiently direct and specific relationship between the sign and the goods or services in question to enable the relevant public immediately to perceive, without further thought, a description of the goods or services in question (see judgment of 17 October 2012 in MIP Metro v OHIM — J. C. Ribeiro (MISS B), T‑485/10, EU:T:2012:554, paragraph 29 and the case-law cited).
44 In the present case, the word element ‘pure’ exists in English and also in a similar form in other languages, including Italian (puro), French (pur), Spanish (puro), Portuguese (puro), German (pur), and Dutch (puur), which is the reason why it may be assumed that that word will be understood by consumers in those countries. In other languages, however, the word has no equivalent originating from the same stem (‘pur-’). While it is true that a large portion of the population of those language areas will understand the English word ‘pure’, which forms part of the basic vocabulary frequently used in advertising to describe the characteristics of goods, it nevertheless cannot be accepted, contrary to what the intervener submits, that, in the absence of any supporting evidence, it is understood throughout the territory of the European Union. The Board of Appeal therefore correctly found that there was a significant number of consumers for whom the word ‘pure’ was devoid of any meaning. For that portion of the relevant public, the word is fanciful and has, as the Board of Appeal correctly found, an average inherent distinctiveness, which, moreover, is not disputed by the applicant.
45 For the first category of consumers, by contrast, the word ‘pure’ is a descriptive term which alludes to the quality and purity of a product. As OHIM has noted, the word suggests that the products which it describes are fresh, natural or healthy. That reasoning applies to any product characterised by a particular taste or flavour. For mints, in particular, that term refers to the lack of artificial additives and colourings, to fresh breath and to the purity of those sweets with mint flavour alone, distinct, for example, from sweets with mint and lemon flavour. Moreover, it is the applicant itself that alludes, in Community figurative mark No 8813487, to fresh breath and to the ‘pure’ mint flavour in so far as that mark is composed of, inter alia, the word elements ‘pure fresh’ and ‘pure breath’. Similarly, there are other goods belonging to the categories ‘Confectionery’ and ‘Sweets’, particularly goods with a chocolate base (pure chocolate) or a caramel base (pure caramel), for which use of the word ‘pure’ clearly refers to the high quality of the goods concerned or to the purity of their ingredients. The applicant itself acknowledges, moreover, in paragraph 21 of the application, that it has created brands using the element ‘pure’ as that term conveyed the idea of deep freshness.
46 Those considerations are not called into question by the arguments put forward by the applicant.
47 In the first place, the argument that the word ‘pure’ is not commonly used in confectionery and candy advertisements and that purity is not a characteristic of those goods does not resolve the question of how the relevant public will perceive that word element. That question does not depend on whether or not that word element is frequently used in advertisements or whether use of that element in the context of marketing a product is logically or scientifically correct. The only relevant question in this case, for the purposes of determining whether the element ‘pure’ is distinctive or whether it is, on the contrary, descriptive, is whether or not use of a term in the marketing of a product leads the consumer to perceive that term as a description of the product, since a word mark which is descriptive of the characteristics of goods or services is, on that account, necessarily devoid of any distinctive character in relation to those goods or services (see, to that effect, judgment of 29 March 2012 in Kaltenbach & Voigt v OHIM (3D eXam), T‑242/11, EU:T:2012:179, paragraph 39 and the case-law cited).
48 In the second place, the applicant’s argument that the distinctiveness of the element ‘pure’ is even greater given that the applicant has demonstrated intensive use of a family of trade marks that share the element ‘pure’ is unrelated to the question of whether the inherent distinctiveness of an element of a composite mark is higher or lower. This argument will be addressed in the context of the global assessment of the likelihood of confusion.
49 In the third place, the applicant’s argument that OHIM’s decision-making practice indicates that the word element ‘pure’ is not descriptive also cannot succeed. The applicant relies, first, on the decision of the Opposition Division of OHIM of 29 August 2011 in Case B 1 771 164, Pure Collection Limited v Tina Baum. At page 7 of that decision, the Opposition Division noted that the word element ‘pure’ had no particular meaning in relation to the goods at issue, namely clothing, footwear and bags adapted for sporting articles. Consequently, the Opposition Division found that the distinctive character of the word element ‘pure’ was normal. However, contrary to what the applicant apparently infers from that decision, the Opposition Division in no way concluded that the element ‘pure’ had, as a general rule, an average distinctive character. Although it is true that the element ‘pure’ did not characterise the goods at issue in that case, the same reasoning cannot apply to the goods in the present case, as has been shown in paragraph 45 above. Second, the applicant relies on the decision of the Opposition Division of OHIM of 18 February 2013 in Case B 1 916 546, Euroquimica SA v The Dial Corporation. That case involved laundry detergents sold under the marks PUREX and PUREX COMPLETE. The Opposition Division concluded, at page 6 of that decision, that the word ‘purex’ had no meaning for a major part of the relevant public, comprising the Spanish public, whereas it would be associated by a small portion of consumers in that public with the concept of purity of the detergent derived from use of the product. The Opposition Division stated that, for that smaller part of the relevant public, the word elements ‘purex’ and ‘complete’ had an equivalent distinctive character. With regard to the mark PUREX, the Opposition Division stated that that word was distinctive even for consumers who associated it with the concept of the purity or cleanliness of detergent, since that word does not exist in Spanish as such. However, it cannot be inferred from the reasoning followed by the Opposition Division in that case that the word element ‘pure’, in the present case, also has a distinctive character, since the comparison made by the Opposition Division in the case mentioned above did not involve the word ‘pure’, but a different expression. It follows that the decisions relied on by the party relate to circumstances that differ significantly from those in the present case and that they are, therefore, not relevant to the outcome of the present dispute.
50 It must therefore be concluded that the Board of Appeal acted correctly in finding that, for the part of the relevant public that understood the meaning of the word ‘pure’, that word was descriptive. As has been shown in paragraph 45 above, the word element ‘pure’ has a sufficiently direct and specific link with the goods in question to enable consumers immediately to perceive, without further thought, a description of one of the characteristics of those goods. For those consumers who understand the word ‘pure’, that term is, therefore, devoid of any distinctive character (see, to that effect and by analogy, judgment of 27 February 2002 in REWE-Zentral v OHIM (LITE), T‑79/00, ECR, EU:T:2002:42, paragraphs 35 to 39). By contrast, for those consumers who do not understand the meaning of the word ‘pure’, the element ‘pure’ is, as the Board of Appeal correctly concluded, without being challenged on this point by the parties, a fanciful term endowed with average distinctive character.
The relative weight of the word elements which make up the mark applied for
51 The Board of Appeal took the view that, for the part of the relevant public that understood the meaning of the word ‘pure’, the more distinctive and dominant element of the mark applied for is the element ‘trident’. For those consumers who do not understand the word ‘pure’, the element trident is the more dominant element, since it features at the beginning of the mark and is longer than the element ‘pure’.
52 The applicant does not specifically express an opinion on the relative weight of the word elements which make up the mark applied for. OHIM and the intervener express their agreement with the Board of Appeal’s line of argument. The intervener adds that, in assessing the similarity of the marks at issue, the Board of Appeal should also have taken into account the fact that TRIDENT has long been a highly recognised brand throughout the European Union.
53 It follows from the case-law that the consumer generally pays greater attention to the beginning of a mark than to the end (judgments of 7 September 2006 in Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, ECR, EU:T:2006:247, paragraph 51, and of 25 March 2009 in L’Oréal v OHIM — Spa Monopole (SPALINE), T‑21/07, EU:T:2009:80, paragraph 24) and that the word placed at the beginning of the sign is likely to have a greater impact than the rest of the sign (judgment of 16 March 2005 in L’Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, ECR, EU:T:2005:102, paragraph 64).
54 For those consumers who do not understand the word ‘pure’, the word ‘trident’ is the more important element. It features at the beginning of the mark applied for and, moreover, consists of seven letters as opposed to the four letters of the word ‘pure’. It must, however, be stressed that the length of the word ‘trident’ has an impact on, inter alia, the visual perception of the mark TRIDENT PURE. As regards the phonetic perception, it should be borne in mind that one section of those consumers will pronounce the word ‘pure’ in one syllable, whereas another section of them will pronounce it in two syllables. For the latter category, the difference between the elements ‘trident’ and ‘pure’ in terms of length is less perceptible phonetically.
55 For those consumers who do understand the word ‘pure’, the element ‘trident’ has an even greater importance given that, for those consumers, the word ‘pure’ lacks distinctiveness by reason of its descriptive nature.
56 With regard to the intervener’s argument that the fact that TRIDENT has long been a highly recognised brand throughout the European Union is likely to increase the significance of the element ‘trident’ in the mind of consumers, it must be noted, without it being necessary to take a position on that argument’s validity, that at no stage of the proceedings before OHIM or before the Court has the intervener put forward evidence demonstrating the alleged reputation of its umbrella brand TRIDENT throughout the territory of the European Union. Consequently, that argument cannot in any event succeed.
The comparison between the mark applied for and Community figurative mark No 9291634 (word element ‘pure’ above a design representing a mint leaf) and the likelihood of confusion
Comparison of the signs
– Visual comparison
57 The Board of Appeal took the view that, for those consumers who understood the word ‘pure’, the marks at issue were dissimilar from a visual perspective, whereas, for other consumers, they were visually similar to a low degree.
58 The applicant submits that the signs at issue are very similar from a visual perspective, whereas OHIM and the intervener align themselves, essentially, with the Board of Appeal’s findings.
59 As a preliminary point, it should first be noted that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since those two types of mark have a graphic form capable of creating a visual impression (see judgment of 4 May 2005 in Chum v OHIM — Star TV (STAR TV), T‑359/02, ECR, EU:T:2005:156, paragraph 43 and the case-law cited).
60 In the present case, the marks at issue share the element ‘pure’, which is the second word element of the mark applied for and the only word element of the earlier mark. They differ in the presence, in the mark applied for, of the word element ‘trident’ and, in the earlier mark, of the figurative element consisting of the image of a green mint leaf against a blue background. The size of that leaf is almost five times that of the element ‘pure’ written in stylised white capital letters. The leaf appears in the middle of a rectangle in which water and ice particles are represented around and above the leaf, which is also surrounded by rays of light coming from the background of the image.
61 With regard to the figurative element of the earlier mark, the Board of Appeal found that, because of the large size of that element in relation to the word element and its central position in that earlier mark, it had to be regarded as playing a dominant role. As for the word element ‘pure’ of the earlier mark, the Board of Appeal considered it to be co-dominant at most.
62 The applicant disputes that assessment, relying on case-law which holds that, where a mark consists of both verbal and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the mark (judgment of 22 May 2008 in NewSoft Technology v OHIM — Soft (Presto! Bizcard Reader), T‑205/06, EU:T:2008:163, paragraph 54). Moreover, it submits, the figurative element is descriptive only for chewing gum and refers to its mint flavour. In addition, it will simply be seen as a background of the word element ‘pure’.
63 OHIM and the intervener take issue with those arguments.
64 It should be noted that it does not follow from the case-law relied on by the applicant that the word elements of a mark must always be considered to be more distinctive than the figurative elements. In the case of a composite mark, the figurative element may, in particular on account of its shape, size, colour or position in the sign, rank equally with the word element (see, to that effect, judgment of 23 November 2010 in Codorniu Napa v OHIM — Bodegas Ontañon (ARTESA NAPA VALLEY), T‑35/08, ECR, EU:T:2010:476, paragraphs 37 and 39 and the case-law cited).
65 In the present case, the following findings must be made.
66 First, the representation of a mint leaf has, in itself, a low degree of distinctiveness for the goods in question. That figurative element alludes to the flavour of mint and, thus, to the flavour of the goods in question. While that fact does not lead to the conclusion that the mint leaf is devoid of all distinctive character, since it is suggestive of the goods in question (see, to that effect, judgment of 25 March 2010 in Nestlé v OHIM — Master Beverage Industries (Golden Eagle and Golden Eagle Deluxe), T‑5/08 to T‑7/08, ECR, EU:T:2010:123, paragraph 44), it must nevertheless be held that it is a banal element. With regard to the marketing of chewing gum or mints, the representation of a mint leaf naturally comes to mind.
67 Second, the reproduction is not limited to highlighting a mere mint leaf, the representation of the image being relatively complex in that the leaf is somewhat ‘vaporised’ in the form of water and ice particles and rays of light coming from the background of the image. Those elements enhance, albeit to a limited degree, the distinctiveness of the representation of the leaf.
68 It follows that the element consisting of a mint leaf cannot be considered to be negligible in the overall visual impression produced by the earlier mark. On the contrary, that element constitutes a large part of the earlier mark. It should, moreover, be noted that the mint leaf attracts greater attention on account of its green colour, which contrasts strongly with the blue background, and because of the rays of light, which focus attention on the leaf. The figurative element thus occupies an important place in the earlier mark. However, the element ‘pure’ cannot be regarded as being secondary in the overall impression produced by the earlier mark, since it also attracts attention by reason of its size and the fact that it is the sole word element and is placed at the top of that mark.
69 For those consumers who understand the word ‘pure’, that word is descriptive and lacks distinctiveness. In the Board of Appeal’s view, the signs at issue are therefore dissimilar, whereas the applicant considers them to be very similar.
70 In this context, it must be stated that the fact that one of the two words which make up a word mark is descriptive is not, on its own, sufficient to conclude that that word is negligible in the overall impression produced by that mark (judgment of 27 March 2014 in Oracle America v OHIM — Aava Mobile (AAVA MOBILE), T‑554/12, EU:T:2014:158, paragraph 34).
71 While it follows from the foregoing that the element ‘pure’ is not negligible in the overall visual impression produced by the earlier mark, it must nevertheless be acknowledged that, for those consumers who understand the word ‘pure’, the main element of that mark consists of the image of the mint leaf. Similarly, the main element of the mark applied for, for that category of consumers, is the word element ‘trident’. It follows that the element common to both marks, namely the element ‘pure’, will attract those consumers’ attention to a limited extent and that the degree of visual similarity is thus very low. The Board of Appeal therefore erred in denying the existence of any visual similarity.
72 For those consumers who do not understand the word ‘pure’, it is true that, in the case of the earlier mark, that element is endowed with a more evident distinctive character. However, it must be stated that that fact is mitigated by the position, size and graphic representation of the mint leaf. In the light of those considerations, and by reason of the fact that, as has been shown in paragraph 54 above, the more important element of the mark applied for is, for that category of consumers also (see paragraph 54 above), the word element ‘trident’, the degree of visual similarity is, for those consumers, low, as the Board correctly found.
73 That conclusion is not called into question by the case-law and the OHIM Guidelines relied on by the applicant in support of its argument that two signs are similar when one whole sign is fully incorporated in the other.
74 As a preliminary point, it should be pointed out that the judgments of 23 October 2002 in Oberhauser v OHIM — Petit Liberto (Fifties) (T‑104/01, ECR, EU:T:2002:262) and of 15 February 2005 in Cervecería Modelo v OHIM — Modelo Continente Hipermercados (NEGRA MODELO) (T‑169/02, ECR, EU:T:2005:46), cited by the applicant in paragraph 52 of the application, make no reference to such a principle and therefore are not relevant to the resolution of the present dispute.
75 With regard to the other judgments cited in paragraph 52 of the application, it should be stated that it is indeed true that the Court has held that, where one of the two words which alone constitute a word mark was identical, both visually and aurally, to the single word which constituted an earlier word mark, and where those words, taken together or in isolation, had no conceptual meaning for the public concerned, the marks at issue, each considered as a whole, were normally to be regarded as being similar within the meaning of Article 8(1)(b) of Regulation No 207/2009 (see judgments of 25 November 2003 in Oriental Kitchen v OHIM — Mou Dybfrost (KIAP MOU), T‑286/02, ECR, EU:T:2003:311, paragraph 39, and of 8 March 2005 in Leder & Schuh v OHIM — Schuhpark Fascies (JELLO SCHUHPARK), T‑32/03, EU:T:2005:82, paragraph 39). However, that case-law applied in the context of a comparison between two word marks. In the present case, the comparison is between a word mark and a figurative mark.
76 In addition, with regard to the judgment of 6 October 2005 in Medion (C‑120/04, ECR, EU:C:2005:594), relied on by the applicant, it should be noted that it follows from that judgment that, beyond the usual case in which the average consumer perceives a mark as a whole, and notwithstanding that the overall impression may be dominated by one or more components of a composite mark, it is by no means excluded that, in a particular case, an earlier mark used by a third party in a composite sign including the name of the company of that third party may still have an independent distinctive role in the composite sign, without necessarily constituting the dominant element. In such a case, the overall impression produced by the composite sign may lead the public to believe that the goods or services in question derive, at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established. The finding that there is such a likelihood cannot be subject to the condition that the overall impression produced by the composite sign must be dominated by the part of it which is represented by the earlier mark (judgment in Medion, cited above, EU:C:2005:594, paragraphs 30 to 32).
77 That judgment, however, concerns the very specific case of a composite mark created by the juxtaposition of a new element and the whole of an earlier mark. In those circumstances, that latter mark, even if it is not the dominant element of the composite mark, may still retain an independent distinctive role in the composite mark. In such a case, the composite mark and that other mark may be considered to be similar.
78 The Court has held in this context that, despite the fact that the judgment in Medion, paragraph 76 above (EU:C:2005:594), concerned a situation in which the earlier mark had been reproduced identically in the later mark, it was nevertheless necessary to hold that, in the event that the earlier mark was not reproduced identically in the later mark, it was also possible that the signs at issue were similar by reason of the similarity between the earlier mark and one element of the later mark which had an independent distinctive role (judgment in Golden Eagle and Golden Eagle Deluxe, paragraph 66 above, EU:T:2010:123, paragraph 60).
79 That said, it should, however, be pointed out that that reasoning can apply only where the differences between the earlier mark and the element reproducing that mark in the later mark are minimal, which is not the situation in the present case, in which the later mark reproduces only the word element ‘pure’ and not the figurative element representing the mint leaf. Moreover, the Court held, in the case referred to, that, despite the fact that the earlier mark had been reproduced, in a similar form, by the later mark, the visual similarity between the marks at issue was merely low, in particular as the earlier mark had not been reproduced identically in the later mark (see, to that effect, judgment in Golden Eagle and Golden Eagle Deluxe, paragraph 66 above, EU:T:2010:123, paragraph 61).
80 In the present case, the mark applied for reproduces only one element of the earlier mark, which, for its part, is strongly characterised by a figurative element which is not reproduced in the mark applied for. Those circumstances differ from those described by the Court of Justice in the judgment referred to, which is therefore not relevant for the resolution of the present dispute.
81 Last, so far as concerns the OHIM Guidelines relied on by the applicant in paragraph 53 of the application, it must be pointed out that these cannot either take priority over the provisions of Regulation No 207/2009 or indeed influence the interpretation of those provisions by the Courts of the European Union. On the contrary, they are designed to be read in accordance with the provisions of Regulation No 207/2009 (judgment of 27 June 2012 in Interkobo v OHIM — XXXLutz Marken (my baby), T‑523/10, ECR, EU:T:2012:326, paragraph 29).
82 Furthermore, those guidelines merely reproduce, in essence, the principle laid down in the judgment in Medion, paragraph 76 above (EU:C:2005:594), which, as has been shown in paragraph 79 above, is not relevant in the present case. Last, the guidelines provide, in point 5.2.1 of subsection II of section C of Chapter 2 of Part 2, that, ‘[w]here both signs contain further elements to the common component, the coincidence in a common component is generally insufficient in itself for establishing similarity of signs’. Such is the situation in the present case, since both the earlier mark and the mark applied for contain further elements, namely the figurative element reproducing the mint leaf and the word element ‘trident’. The examples provided by OHIM, referred to in the excerpt cited by the applicant in paragraph 53 of the application, concern only situations in which one of the two marks is composed exclusively of an element which appears, in an identical or very similar manner, in the other mark.
83 Accordingly, the OHIM Guidelines can also not be relied on in support of the applicant’s line of argument.
– Phonetic similarity
84 The Board of Appeal found that, for those consumers who understood the word ‘pure’, the marks at issue were of low phonetic similarity. For other consumers, it found, the marks at issue were, at most, phonetically similar to an average degree.
85 In the applicant’s view, the marks at issue are very similar from a phonetic perspective, whereas OHIM and the intervener align themselves, essentially, with the Board of Appeal’s line of argument.
86 It must be pointed out that the figurative element of the earlier mark cannot be pronounced. The phonetic similarity must therefore be examined on the basis, first, of the mark applied for, TRIDENT PURE, and, second, of the word element of the earlier mark, ‘pure’. It is therefore the second element of the mark applied for and the sole pronounced element of the earlier mark that coincide.
87 As has already been stated in the context of the visual comparison, the attention of the consumer is usually directed to the beginning of the word, a principle which also applies to the phonetic comparison (see, to that effect, judgment of 17 March 2004 in El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, ECR, EU:T:2004:79, paragraph 83). The element ‘trident’ in the mark applied for will thus attract more attention than the element ‘pure’. It follows that, for those consumers who understand the word ‘pure’, that fact and the absence of distinctiveness of the element ‘pure’ result in a low phonetic similarity between the marks at issue.
88 By contrast, the degree of similarity for other consumers is greater. As has been shown in paragraph 54 above, it is possible to pronounce the element ‘pure’ in one or two syllables. From a phonetic perspective, the element ‘trident’ in the mark applied for will occupy, depending on the case, a more or less conspicuous position in comparison with the element ‘pure’. For those who pronounce the word ‘pure’ in one syllable, the phonetic similarity between the marks at issue remains below average, since the word ‘trident’ consists of two syllables containing three dental consonants the pronunciation of which is even more emphasised, as opposed to one syllable in the word ‘pure’, which, phonetically, plays a less important role in the mark applied for. However, even for those consumers who pronounce the word ‘pure’ in two syllables, the significance of the element ‘trident’, which is positioned in first place, lessens the resemblance between the marks at issue, with the result that, for those consumers, those marks are of merely average phonetic similarity.
89 Accordingly, the Board of Appeal’s conclusions regarding the phonetic comparison must be endorsed.
– Conceptual similarity
90 With regard to those consumers who understand the word ‘pure’, the Board of Appeal found that the conceptual similarity between the marks at issue, attributable to the fact that they both referred to the concept of purity conveyed by the common element ‘pure’, was not relevant to the conceptual comparison. For other consumers, it found, the conceptual comparison was neutral.
91 The applicant submits there are ‘conceptual coincidences’ for those who understand the word ‘pure’.
92 OHIM and the intervener take issue with that argument.
93 As has been found in paragraph 70 above, the fact that an element is descriptive does not mean that that element should not be taken into account for purposes of the conceptual comparison. It must therefore be held, contrary to the Board of Appeal’s findings, that, for those consumers who understand the word ‘pure’ as being a reference to the purity of the goods at issue and to the purity of breath, there is a conceptual similarity between the marks at issue. The fact that the word ‘pure’ is descriptive of the characteristics of the goods in question does not alter the conceptual content of those marks (see, to that effect, judgment of 8 December 2005 in Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH), T‑29/04, ECR, EU:T:2005:438, paragraph 61).
94 By contrast, for consumers who do not understand the word ‘pure’, the Board of Appeal correctly found that the conceptual comparison was neutral.
Likelihood of confusion
95 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 marks and the similarity of the goods or services concerned. 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 (judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and of 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74).
96 As is apparent from recital 8 in the preamble to Regulation No 207/2009, the assessment of the likelihood of confusion depends on numerous elements, in particular the public’s recognition of the trade mark on the market in question. The more distinctive the trade mark, the greater will be the likelihood of confusion, and therefore marks with a high distinctive character, either per se or because of their recognition by the public, enjoy broader protection than marks with less distinctive character (see, by analogy, judgments in Canon, paragraph 95 above, EU:C:1998:442, paragraph 18, of 11 November 1997 in SABEL, C‑251/95, ECR, EU:C:1997:528, paragraph 24, and of 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, ECR, EU:C:1999:323, paragraph 20).
97 With regard to the mark applied for, it has already been concluded in paragraphs 54 and 55 above that the element ‘trident’ has, for all consumers, a greater weight than the element ‘pure’, particularly because the consumer pays more attention to the beginning of a mark than to its end.
98 As far as the inherent distinctiveness of the earlier mark is concerned, the Board of Appeal correctly regarded this as being normal.
99 With regard to the enhanced distinctive character owing to use of the earlier mark, the applicant maintains its line of argument already raised before OHIM, to the effect that the word ‘pure’ is the common element of a family of trade marks belonging to it. As a result, it submits, the distinctive character of the word ‘pure’ is even greater.
100 It must be pointed out that, where the opposition to a Community trade mark application is based on several earlier marks and those marks exhibit characteristics allowing them to be regarded as forming part of the same ‘series’ or ‘family’, which may be the case, inter alia, either when they reproduce in full the same distinctive element with the addition of a graphic or word element differentiating them from one another, or when they are characterised by the repetition of the same prefix or suffix taken from an original mark, such a circumstance constitutes a relevant factor for the purpose of determining whether there is a likelihood of confusion. In such circumstances, a likelihood of confusion may be created by the possibility of association between the mark applied for and the earlier marks forming part of the series where the mark applied for displays such similarities to those marks as might lead the consumer to believe that it forms part of that same series and therefore that the goods covered by it have the same commercial origin as those covered by the earlier marks, or a related origin (see, to that effect, judgment of 23 February 2006 in Il Ponte Finanziaria v OHIM — Marine Enterprise Projects (BAINBRIDGE), T‑194/03, ECR, EU:T:2006:65, paragraphs 123 and 124). It must, however, be pointed out that the likelihood of association described above can be pleaded only if two conditions are cumulatively satisfied. First, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’. Second, the trade mark applied for must not only be similar to the marks belonging to the series, but must also display characteristics capable of associating it with the series (judgment in BAINBRIDGE, cited above, EU:T:2006:65, paragraphs 126 and 127).
101 However, as the Board of Appeal correctly found, the applicant has provided no proof of use of its alleged series of marks. It did not more than prove, apart from the marks referred to in paragraph 30 above, the mere existence of its earlier marks, which is not sufficient to meet the first condition set out in paragraph 100 above. Without it being necessary to examine whether the second condition set out in that paragraph was met, it must therefore be held that, since the applicant did not establish to the requisite legal standard that its alleged series of marks had been put to use, the Board of Appeal acted correctly in finding that the enhanced distinctiveness of the earlier mark had not been demonstrated.
102 For those consumers who do not understand the word ‘pure’, the global assessment must therefore be based on a normal distinctiveness of the marks at issue, on a low visual similarity and on a low or average phonetic similarity, depending on whether the element ‘pure’ is pronounced in one or two syllables, while the conceptual comparison is neutral. The relevant public is the general public in the European Union demonstrating a normal level of attentiveness.
103 It should also be noted that, in the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the opposing signs do not always have the same weight. It is necessary to examine the objective conditions under which the marks may be present on the market (judgment of 3 July 2003 in Alejandro v OHIM — Anheuser-Busch (BUDMEN), T‑129/01, ECR, EU:T:2003:184, paragraph 57). The extent of the similarity or difference between the signs may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by the opposing signs are marketed. If the goods covered by the marks at issue are normally sold in self-service stores where consumers choose the product themselves and must therefore rely primarily on the image of the mark applied to the product, the visual similarity between the signs will, as a general rule, be more important. If, on the other hand, the product concerned is primarily sold orally, greater weight will usually be attributed to any phonetic similarity between the signs (judgment of 6 October 2004 in New Look v OHIM — Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, ECR, EU:T:2004:293, paragraph 49). Furthermore, the degree of phonetic similarity between two marks is of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public normally perceives the mark designating those goods by sight (see judgment of 21 February 2013 in Esge v OHIM — De’Longhi Benelux (KMIX), T‑444/10, EU:T:2013:89, paragraph 37 and the case-law cited).
104 In the present case, the Board of Appeal found that the goods at issue were bought on sight.
105 The applicant, by contrast, takes the view that the goods are bought over the counter, that is to say, orally.
106 The goods covered by the signs at issue are intended for the general public and can be bought in, inter alia, supermarkets, specialised points of sale, such as kiosks, or service stations. As a general rule, those shops operate on a self-service basis. Even if the goods at issue may be purchased orally, visual perception of the marks at issue will take place before the actual purchase. Therefore, the visual similarity of the signs at issue carries more weight than their phonetic similarity in the assessment of overall similarity.
107 In the light of all of the foregoing, the view must therefore be taken that, for those consumers who do not understand the word ‘pure’, the differences which have been identified between the marks at issue, particularly the critical importance that consumers attribute to visual appearance characterised, as regards the earlier mark, by the significant role played by the figurative element and, as regards the mark applied for, by its beginning, are sufficient to lessen phonetic similarity even for the category of consumers who pronounce the word ‘pure’ in two syllables. It must therefore be held that the overall impressions created by the marks at issue are, despite the similarities identified, sufficiently different to justify the conclusion that there is no likelihood of confusion for consumers who do not understand the word ‘pure’.
108 For those consumers who do understand that word, any likelihood of confusion must also a fortiori be ruled out, since, first, those consumers will attribute even less importance to the element ‘pure’, which to them is merely descriptive, and, second, the impact of the identified conceptual similarity on the overall impression created by the marks at issue is very low and is thus not decisive for the purposes of the global assessment of the likelihood of confusion. The conceptual similarity results solely from the descriptive element ‘pure’, which attracts those consumers’ attention only in a limited manner.
109 Accordingly, the Board of Appeal was right to conclude that there was no likelihood of confusion between the marks at issue, even if it committed two errors, first, in concluding that there was no visual similarity between those marks and, second, in taking the view that the conceptual similarity of those marks resulting from the presence of the word element ‘pure’ was not relevant for the purposes of the conceptual comparison. However, those errors had no bearing on the result of the assessment which it carried out.
The comparison between the mark applied for and Community trade mark No 6771869 (PURE WHITE) and the likelihood of confusion
110 The Board of Appeal took the view that, for the part of the relevant public who understood the meaning of the words ‘pure’ and ‘white’, the distinctive character of the earlier mark in question lay purely in its graphic design, since both of the word elements were merely descriptive. For those consumers, the marks at issue are visually dissimilar and of low phonetic similarity. From a conceptual perspective, the similarity resulting from the common element ‘pure’ is not relevant, since it is descriptive. The same reasoning applies to those consumers who understand the meaning of the word ‘pure’ but not that of the word ‘white’. By contrast, for those who understand neither the word ‘pure’ nor the word ‘white’, the marks at issue are of low visual similarity and of average phonetic similarity, and the conceptual comparison is, for that category of consumers, neutral.
111 The applicant submits that the marks at issue are very similar, particularly as the word element ‘white’ is descriptive and the element ‘pure’ is the common and dominant element of the marks at issue, whereas OHIM and the intervener align themselves, essentially, with the Board of Appeal’s line of argument.
112 Community figurative mark No 6771869 consists of two word elements written in capital letters and slightly inclining towards the right, namely ‘PURE’ and ‘WHITE’. The characters of the first element are grey, while those of the second element are white with a black border and a small stylised grey star that appears at the bottom left of the capital letter ‘W’.
113 For the part of the relevant public that does not understand either ‘pure’ or ‘white’, each of those elements is of average distinctiveness. From a visual perspective, they have the same weight in the earlier mark on account of their very similar size and similar graphic representation. While it is true that the element ‘pure’ appears at the beginning of the mark, the element ‘white’ is nevertheless emphasised by virtue of the small star featuring at the bottom left of the capital letter ‘W’, a factor which, to a certain extent, focuses attention on that element and mitigates the fact that the element ‘white’ is placed below the element ‘pure’. Account being taken of the fact that, for those consumers, the element ‘trident’ in the mark applied for is of greater importance than the element ‘pure’, it must be concluded, as the Board of Appeal correctly did, that there is a low degree of visual similarity between those marks.
114 From a phonetic perspective, those consumers will attribute more value to the beginning of each of the marks at issue. In addition, the dissimilarity between the elements ‘trident’ and ‘white’ lessens the similarity associated with the common element ‘pure’. Even for those consumers who pronounce both elements ‘white’ and ‘pure’ in two syllables, the phonetic similarity cannot exceed the degree identified in the context of the phonetic comparison between the mark applied for and Community figurative mark No 9291634 carried out in paragraph 88 above. The Board of Appeal’s conclusion that the similarity of the marks in question for those consumers who do not understand either of the elements ‘pure’ or ‘white’ is, at most, average is therefore correct.
115 The conceptual comparison, by contrast, remains neutral, as the Board of Appeal correctly found without being challenged by the applicant.
116 For those consumers who understand the words ‘pure’ and ‘white’, those elements are descriptive. However, as has been stated in paragraph 70 above, it does not follow from that fact that those elements do not have to be taken into account for the purposes of the comparison. Consumers for whom those elements are descriptive will still attribute more attention to the graphic representation, the degree of similarity for that category of consumers being lower than for those who do not understand those words.
117 From a phonetic perspective, the high significance of the element ‘trident’ must be taken into account, as must the fact that that element alone has a distinctive character for consumers for whom the phonetic similarity is, consequently, even less evident than for consumers who do not understand the words ‘pure’ and ‘white’. The degree of phonetic similarity for those consumers is therefore merely very low.
118 From a conceptual perspective, the same reasoning as that set out in paragraph 93 above applies. It must therefore be held that there is a certain degree of similarity between the marks at issue.
119 This is also the case for those consumers who understand the word ‘pure’, but not the word ‘white’, and who accordingly attribute more weight to the elements that differ, namely the elements ‘trident’ and ‘white’, which, from their point of view, are the only distinctive elements of the marks at issue.
120 With regard to the global assessment of the likelihood of confusion between the two marks, it is necessary to take into consideration the fact that, for those consumers who do not understand the words ‘pure’ and ‘white’, the marks at issue are of low visual similarity and are, at most, of average phonetic similarity and are each of average distinctiveness. As has been demonstrated in paragraph 101 above, the applicant has proved neither that there was an enhanced distinctive character by reason of use nor that there was a family of trade marks. Taking into account the fact that, first, consumers pay more attention to the beginnings of marks than to their ends and that, second, visual appearance plays a more important role than phonetic appearance in the present case, it must be concluded that there is no likelihood of confusion for consumers who understand neither the word ‘pure’ nor the word ‘white’. For those consumers who understand the word ‘pure’, but not the word ‘white’, the differences between the marks at issue are even greater, since these consumers attach more weight to the elements which they do not understand, with the result that the only element which those marks have in common, namely the element ‘pure’, will attract their attention less in comparison with consumers who understand neither of the words ‘pure’ and ‘white’. Finally, for the reasons set out in paragraph 108 above, the same conclusion must apply in regard to consumers who do understand the words ‘pure’ and ‘white’.
121 Accordingly, the Board of Appeal was correct to exclude, also for Community trade mark No 6771869, all likelihood of confusion for all groups of consumers.
The comparison between the mark applied for and French word mark No 63431610 (PURE FRESH)
122 The Board of Appeal took the view that the word element ‘pure’ was descriptive for the French public, that the similarity was low from both a visual and a phonetic perspective, that the conceptual similarity resulting from the common element ‘pure’ was not relevant for the purposes of a conceptual comparison and that the distinctive character of the earlier mark ranged from very low to average, depending on whether the French consumer understood the meaning of the word ‘fresh’. Accordingly, in the Board of Appeal’s view, any likelihood of confusion was excluded.
123 The applicant, OHIM and the intervener refer, essentially, to the arguments which they have already raised.
124 It must be held that, for French consumers, who make up the relevant public for the purposes of this comparison, the word ‘pure’ is descriptive. For the part of that public which understands the meaning of the word ‘fresh’, that word must be regarded as being suggestive of the sensation associated with consuming the goods in question and is, therefore, endowed with a very low distinctive character. For the part of the relevant public which does not understand the word ‘fresh’, the distinctiveness of that word must be considered to be average. French consumers therefore attribute more importance to the elements ‘trident’ and ‘fresh’, with the result that the degree of visual and phonetic similarity is, at most, low. In the light of the considerations set out in paragraph 70 above, it must be held that there is a certain conceptual similarity for all French consumers.
125 With regard to the global assessment of the likelihood of confusion, it is appropriate to refer, in essence, to the findings already made in the context of the examination of the other marks examined. Given that the similarities between the marks at issue are even less evident than in the context of the other marks examined and that the element ‘pure’ is descriptive for all of the relevant public concerned, the Board of Appeal’s conclusion — that a likelihood of confusion between the marks at issue is excluded — must be endorsed.
The comparison between the mark applied for and the other earlier marks relied on by the applicant
126 The applicant relies, furthermore, on Community figurative mark No 8813487, Italian figurative mark No 1280532 and Benelux figurative mark No 864562. The Board of Appeal found that those marks were even less similar than the other marks previously examined and that, therefore, any likelihood of confusion was a fortiori excluded.
127 The applicant, OHIM and the intervener, refer, essentially, to the arguments which they have already raised.
128 As the Board of Appeal correctly found, those marks are made up of the word element ‘mentos’ represented in stylised lower-case letters of much greater size than the other elements. The word element ‘mentos’, which is of average inherent distinctiveness, is the most important element of those marks, with the result that the similarity between the mark applied for and those marks must, a fortiori, be considered to be lower than in the case of the other marks examined, both from a visual and from a phonetic perspective.
129 Conceptually, all of those marks refer to the purity of the goods, which is the reason why it is appropriate to hold that there is a certain degree of conceptual similarity between the marks at issue for those consumers who understand the meaning of the word ‘pure’, whereas for others the conceptual comparison remains neutral.
130 With regard to the global assessment of the likelihood of confusion, it is appropriate to refer, in essence, to the considerations already set out. Given that the similarities between the marks at issue are even less evident than they were between the other earlier marks and the mark applied for, and in view of the fact that the element ‘mentos’ occupies the most important position in all of those earlier marks from a visual perspective, which, as has been shown in paragraph 106 above, plays an important role in the global assessment of the likelihood of confusion, it must be concluded, for the whole of the relevant public in question, that there is no likelihood of confusion.
131 That conclusion is not called into question by the applicant’s argument that consumers would disregard the element ‘mentos’, since they are well accustomed to the umbrella brand MENTOS and would focus their attention on the sub-brand PURE.
132 In that regard, it must be pointed out that the applicant has provided no evidence capable of proving that the umbrella brand MENTOS was widely known by the relevant public. Even on the assumption that it has been proved that the element ‘mentos’ was readily known by the relevant public, that element is not, for that reason, less important for the purposes of the comparison of the signs at issue. On the contrary, the Court of Justice has indicated that the overall impression produced by a mark made up of a widely-known element and an element which was not widely known was, as a general rule, characterised more by the former than by the latter (see, to that effect, judgment in Medion, paragraph 76 above, EU:C:2005:594, paragraph 34). It must also be pointed out that a widely-known word element incorporated in a composite mark is particularly appropriate for indicating the commercial origin of the goods sold under that mark, for which reason it is impossible to regard such an element as ancillary, or even as negligible.
4. Conclusion
133 In view of the foregoing, it must therefore be held that the global assessment of the likelihood of confusion carried out by the Board of Appeal was correct in relation to all of the marks that form the subject-matter of the present dispute. The errors committed by the Board of Appeal had no bearing on the result of that assessment. Accordingly, the single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected and, consequently, the action must be dismissed in its entirety.
Costs
134 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Fifth Chamber)
hereby:
1. Dismisses the action;
2. Orders Perfetti Van Melle Benelux BV to pay the costs.
Dittrich | Schwarcz | Tomljenović |
Delivered in open court in Luxembourg on 16 December 2015.
[Signatures]