JUDGMENT OF THE GENERAL COURT (First Chamber)
26 January 2016 (*)
(Community trade mark — Opposition proceedings — Application for the Community figurative mark LR nova pure. — Earlier international word mark NOVA — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑202/14,
LR Health & Beauty Systems GmbH, established in Ahlen (Germany), represented by N. Weber and L. Thiel, lawyers,
applicant,
v
Office for Harmonisation in the Internal market (Trade Marks and Designs) (OHIM), represented by I. Harrington, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Robert McBride Ltd, established in Manchester (United Kingdom),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 22 January 2014 (Case R 272/2013‑2) relating to opposition proceedings between Robert McBride Ltd and LR Health & Beauty Systems GmbH,
THE GENERAL COURT (First Chamber),
composed of H. Kanninen, President, I. Pelikánová and E. Buttigieg (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 28 March 2014,
having regard to the response lodged at the Court Registry on 23 July 2014,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month of notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991,
gives the following
Judgment
Background to the dispute
1 On 30 March 2011, the applicant, LR Health & Beauty Systems GmbH, filed an application for registration of a Community trade mark with 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 Registration as a mark was sought for the following figurative mark:
3 The goods in respect of which registration was sought are in Class 3 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Soaps for personal use; Perfumery, essential oils, cosmetics, hair lotions; Dentifrices’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 70/2011 of 11 April 2011.
5 On 11 July 2011, Robert McBride Ltd filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.
6 The opposition was based on the following earlier rights:
– the Czech word mark NOVA, registered on 17 July 1992 under reference No 177 539, covering goods in Class 3 corresponding to the following description: ‘Toilet soaps, Perfumes, Essential oils, non-medical toilet preparations, deodorants and antiperspirants for personal use, hair, skin care preparations, Body, Teeth and mouth’;
– the Hungarian word mark NOVA, registered on 26 March 1992 under reference No 135 306, covering goods in Class 3 corresponding to the following description: ‘Toilet soaps, Perfumes, Essential oils, non-medicated toilet preparations, deodorants and antiperspirants for personal use, hair, skin care preparations, Body, Teeth and mouth’;
– the United Kingdom word mark NOVA, registered on 22 October 1976 under reference No 1 069 798, covering goods in Class 3 corresponding to the following description: ‘Soaps; perfumes; essential oils; non-medicated toilet preparations; hair lotions; dentifrices; shampoos; talcum powder; none for sale from vending machines’;
– the international word mark NOVA, protected by international registration No 846 423, extended on 21 February 2005 to Estonia, Latvia and Lithuania, and on 25 July 2005 to Poland, covering goods in Class 3 corresponding to the following description: ‘non-medicated toilet preparations; hair lotions; shampoos; hair conditioners; perfumes; cosmetics; essential oils; talcum powders; dentifrices; hair setting gels; hair sprays’.
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 By decision of 24 January 2013, the Opposition Division upheld the opposition, basing its decision on the sole comparison between the mark applied for and the earlier international word mark NOVA protected by international registration No 846 423 extended to Poland (‘the earlier mark’).
9 On 6 February 2013, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10 By decision of 22 January 2014 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal brought against the decision of the Opposition Division. The Board of Appeal followed the approach of the Opposition Division.
11 In the first place, the Board of Appeal considered, in essence, that the relevant public was the average Polish consumer whose level of attention was not particularly high, in so far as the goods in question included low-cost, mass-produced goods for everyday use.
12 In the second place, the Board of Appeal confirmed that the goods covered by the marks at issue were identical, as stated by the Opposition Division.
13 In the third place, as regards the dominant and distinctive elements of the marks at issue, the Board of Appeal took the view, inter alia, as regards the dominant elements, that the words ‘nova’ and ‘pure’, written in contrasting white lettering and set out in the middle of the mark applied for, were the most dominant elements of that mark. As regards the distinctive elements, the Board of Appeal took the view that only the word element ‘nova’ should be presumed to have at least a minimum degree of distinctiveness, in so far as it had been given protection in Poland and was phonetically identical to the Polish word ‘nowa’, which means ‘new’. Moreover, the Board of Appeal considered that the word ‘pure’ was less important since it is a very basic English word and, in any event, appears in second place after the word ‘nova’.
14 In the fourth place, as regards the comparison of the marks at issue, the Board of Appeal noted that there was an average level of visual similarity between those marks owing to the presence of the word ‘nova’ in both, the secondary importance of the figurative elements comprising the mark applied for and the fact that it is difficult to read those elements because of the high degree of stylisation and the small size of the word element ‘lr’. From a phonetic perspective, the Board of Appeal noted that the marks at issue displayed an average degree of similarity, or even a low degree of similarity for the few consumers who would pronounce both the elements ‘lr’ and ‘pure’. From a conceptual perspective, the Board of Appeal considered that some consumers might recognise the concept of ‘newness’ in the word ‘nova’. Accordingly, the marks at issue were considered to be similar overall.
15 In the fifth place, as regards the assessment of the likelihood of confusion, the Board of Appeal, first, considered that the goods under comparison were identical and that the marks at issue were similar overall. Next, the Board of Appeal noted that the distinctive character of the earlier mark should not be a factor capable of influencing the consumer’s perception of the similarity of the marks at issue. Finally, in so far as the level of attention of the relevant public was not particularly high, the Board of Appeal concluded that the likelihood of confusion between the marks at issue caused by the common element ‘nova’ was increased. Accordingly, the Board of Appeal found that there was a likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009 and, consequently, it endorsed the decision of the Opposition Division.
Forms of order sought
16 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM and, if appropriate, the other party to the proceedings to pay the costs.
17 OHIM contends that the Court should:
– dismiss the action in its entirety;
– order the applicant to pay the costs.
Law
18 The applicant relies on two pleas in law in support of its action, alleging (i) infringement of Article 8(1)(b) of Regulation No 207/2009 and (ii) infringement of Article 8(5) of Regulation No 207/2009.
19 OHIM disputes the applicant’s arguments.
20 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with or similarity to 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 mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
21 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, as the case may be, from economically-linked undertakings constitutes a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. The likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and of the goods or services in question, and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see 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).
22 First, it should be noted that the opposition was based on several earlier rights, as set out in paragraph 6 above. However, in the same way as the Opposition Division, the Board of Appeal compared the mark applied for with the earlier mark alone. Consequently, that is the basis on which the Court will make its assessment of the contested decision.
23 Next, it should be noted that the parties do not dispute the assessments made by the Board of Appeal in respect of the relevant territory and relevant public. Those assessments appear to be well founded and must accordingly be endorsed. It should be noted that the territory to be taken into account in order to assess the likelihood of confusion in the present case is Poland, where the earlier mark is protected under international registration No 846 423. As regards the relevant public, given that the goods covered by the earlier mark and those covered by the mark applied for are everyday consumer goods, which are, accordingly, not intended for a specialist public, the Board of Appeal was correct in finding, in paragraph 17 of the contested decision, that the relevant public is the average Polish consumer, who is deemed to be reasonably well informed and reasonably observant and circumspect (see, to that effect, 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 39).
24 Finally, the parties do not challenge the assessments of the Board of Appeal which concluded that the goods in question are identical. Those assessments, in so far as they appear to be well founded, must be endorsed.
25 It is in the light of those findings that it is necessary in the present case to assess whether the Board of Appeal was correct in finding that there was a likelihood of confusion with the earlier mark so far as concerns the goods covered by the mark applied for.
Comparison of the marks at issue
26 The Board of Appeal, first, took the view that the marks at issue displayed an average level of visual similarity since the dominant word element ‘nova’ common to both marks was identical. Next, the Board of Appeal considered that from a phonetic perspective those marks displayed a low degree of similarity for the few consumers who would pronounce the word element ‘lr’, while, for other consumers who would not pronounce the word element ‘lr’, they displayed an average level of similarity on account of the common word ‘nova’. Finally, from a conceptual perspective, the Board of Appeal considered that the marks at issue had no meaning in the relevant territory, except for certain consumers who might recognise the concept of ‘newness’ in the word ‘nova’.
27 The applicant maintains that the marks at issue differ visually, phonetically and conceptually. It states, in that regard, that the earlier mark NOVA and the word element ‘nova’ of the mark applied for display, at the very most, a low degree of distinctive character. The word ‘pure’, for its part, has distinctive character for the Polish public and is the dominant element of the mark applied for. Moreover, the Polish public pronounces the mark applied for as ‘lr nova pure’ or ‘nova pure’. The applicant adds that the word elements ‘nova’ and ‘pure’ of the mark applied for form a whole in the eyes of the Polish consumer.
28 OHIM disputes the applicant’s arguments, which, it argues, are ineffective and manifestly unfounded.
29 According to settled case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (judgment of 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 30).
30 Furthermore, according to established case-law, a composite trade mark cannot be regarded as being similar to another trade mark which is identical or similar to one of the components of the composite mark, unless that component forms the dominant element within the overall impression created by the composite mark. That is the case where that component is likely to dominate, by itself, the image of that mark which the relevant public retains, with the result that all the other components of the mark are negligible within the overall impression created by it (judgments of 11 July 2006 in Torres v OHIM — Bodegas Muga (Torre Muga), T‑247/03, EU:T:2006:198, paragraph 46, and 18 December 2008 in Torres v OHIM — Bodegas Peñalba López (Torre Albéniz), T‑287/06, ECR, EU:T:2008:602, paragraph 48).
31 However, that approach does not amount to taking into consideration only one component of a composite trade mark and comparing it with another mark. On the contrary, such a comparison must be made by examining the marks in question, each considered as a whole (judgments in Torre Muga, cited in paragraph 30 above, EU:T:2006:198, paragraph 47, and Torre Albéniz, cited in paragraph 30 above, EU:T:2008:602, paragraph 49).
32 According to case-law, it is only if all the other components of the mark are negligible that similarity can be assessed solely on the basis of the dominant element (judgments of 3 September 2009 in Aceites del Sur-Coosur v Koipe, C‑498/07 P, ECR, EU:C:2009:503, paragraph 62, and 17 February 2011 in Annco v OHIM — Freche et fils (ANN TAYLOR LOFT), T‑385/09, ECR, EU:T:2011:49, paragraph 35).
33 Moreover, the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two marks are similar (see judgment of 22 May 2012 in Sport Eybl & Sports Experts v OHIM — Seven (SEVEN SUMMITS), T‑179/11, EU:T:2012:254, paragraph 26 and the case-law cited).
34 In the present case, it should be noted that the earlier mark consists solely of the word element ‘nova’. The mark applied for, however, consists of a combination of word and figurative elements. The word elements ‘nova’ and ‘pure’ appear one after another on two separate lines with a white full stop after the word element ‘pure’. The word element ‘nova’ is written in lower case in white letters, while the word element ‘pure’ is also written in lower case and in white letters, but in bold. The two word elements together with the full stop are set out in a circle against a black background surrounded by an exterior semi-circle. The stylised letters ‘l’ and ‘r’ are positioned at the top and at the centre of the uppermost part of the semi-circle.
35 Before making a visual, phonetic and conceptual comparison of the marks at issue, it is necessary to confirm, first, whether, as the applicant claims, the word element ‘nova’, which is common to the marks at issue, has a very low degree of distinctive character or no distinctive character and is not perceived as the dominant element of the mark applied for, and, secondly, whether the word element ‘pure’ is, by contrast, more distinctive than ‘nova’ and must be considered to be the dominant element of the mark applied for.
Distinctive character of the word elements ‘nova’ and ‘pure’
36 The applicant submits that the word element ‘nova’ has, at most, weak distinctive character in respect of the goods in Class 3. The word element ‘nova’ is, according to the applicant, phonetically identical to the Polish word ‘nowa’, which means ‘new’, and accordingly is descriptive. The word ‘pure’, it argues, is more distinctive than the word ‘nova’.
37 OHIM disputes the applicant’s arguments.
38 For the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods from those of other undertakings. In making that assessment, it is necessary to take into account, in particular, the inherent characteristics of that element and to ask whether it is at all descriptive of the goods for which the mark has been registered (see judgment in 61 A NOSSA ALEGRIA, cited in paragraph 23 above, EU:T:2010:347, paragraph 47 and the case-law cited).
39 Where some elements of a trade mark are descriptive of the goods and services in respect of which that mark is protected or the goods and services covered by the application for registration, those elements are recognised as having only a low, or even very low, distinctive character. Most often, it will be possible to recognise those elements as having distinctive character only because of their combination with the other elements of the mark (see judgment in 61 A NOSSA ALEGRIA, cited in paragraph 23 above, EU:T:2010:347, point 49 and the case-law cited).
40 As regards the earlier mark and the word element ‘nova’ contained in the mark applied for, the applicant has invoked earlier decisions of OHIM and of the Polish patents office in order to demonstrate that the word ‘nova’ has weak distinctive character. In that respect, while, having regard to the principles of equal treatment and sound administration, OHIM must take into account decisions already adopted and consider with special care whether it should decide in the same way or not, the way in which those principles are applied must, however, be consistent with respect for the principle of legality (see, to that effect, judgments of 10 March 2011 in Agencja Wydawnicza Technopol v OHIM, C‑51/10 P, ECR, EU:C:2011:139, paragraphs 73 to 75 and the case-law cited, and 17 July 2014 in Reber Holding v OHIM, C‑141/13 P, EU:C:2014:2089, paragraph 45).
41 For reasons of legal certainty and sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case. The registration of a sign as a mark depends on specific criteria, which are applicable in the factual circumstances of the particular case and the purpose of which is to ascertain whether the sign at issue is caught by a ground for refusal (see judgments in Agencja Wydawnicza Technopol v OHIM, cited in paragraph 40 above, EU:C:2011:139, paragraph 77 and the case-law cited; and of 21 January 2015 in Grundig Multimedia v OHIM (GentleCare), T‑188/14, EU:T:2015:34, paragraph 43).
42 Moreover, the applicant submits that the earlier mark and the word element ‘nova’ contained in the mark applied for have no distinctive character. In that respect, it should be noted that the validity of an earlier international trade mark may not be called into question in proceedings for registration of a Community trade mark but only in cancellation proceedings brought in the Member State concerned (see, to that effect and by analogy, judgments of 24 May 2012 in Formula One Licensing v OHIM, C‑196/11 P, ECR, EU:C:2012:314, paragraph 38, and 11 September 2014 in Continental Wind Partners v OHIM — Continental Reifen Deutschland (CONTINENTAL WIND PARTNERS), T‑185/13, EU:T:2014:769, paragraph 59). The Board of Appeal was therefore correct in finding, in paragraph 20 of the contested decision, that, in the earlier mark, the word ‘nova’ had to be assumed to have at least a minimum degree of distinctiveness.
43 As regard the perception of the word element ‘nova’ by the relevant public, it should be noted that the Board of Appeal correctly pointed out, in paragraph 24 of the contested decision, that certain consumers might recognise the concept of ‘newness’ in the word ‘nova’, at least when the marks at issue are pronounced.
44 However, contrary to what OHIM claims in its response, that identification with the concept of ‘newness’ also takes place from a visual perspective, at least for part of the Polish public. The different spelling of the Polish word ‘nowa’, in so far as it contains the letter ‘w’, is not decisive, given that the Polish language does not include the letter ‘v’ in its alphabet and that, accordingly, some of the consumers in question will not perceive a difference and will compensate naturally for the difference in spelling.
45 It follows that the word element ‘nova’ of the mark applied for has only a low degree of inherent distinctive character in relation to the goods covered, since the word ‘nova’ evokes, at least for part of the Polish public, a characteristic of the goods in question, namely newness.
46 As regards the word element ‘pure’, it should be noted that that English word is not close to the equivalent Polish word ‘czysty’ and is not commonly used in the territory in question. Moreover, the parties do not dispute the fact that the word element ‘pure’ is not commonly used in Poland.
47 In that respect, it should be noted that, according to case-law, understanding of a foreign language may not, in general, be presumed (see, to that effect, judgment of 24 May 2011 in Space Beach Club v OHIM — Flores Gómez (SpS space of sound), T‑144/10, EU:T:2011:243, paragraph 63 and the case-law cited). In the present case, it cannot be presumed that the average Polish consumer will understand the English word ‘pure’, or that he will necessarily attribute the meaning of ‘purity’ to it.
48 Accordingly, the word ‘pure’ will be understood as describing and intensifying an essential characteristic of the goods covered by the mark applied for only by that part of the relevant public which understands English. By contrast, the meaning of the word ‘pure’ will not be understood by a significant proportion of the relevant public. Contrary to OHIM’s claim in its response, the presence of the root ‘pure’ in other Polish words is not sufficient to lead the relevant public to make a connection between the English word ‘pure’ and the concept of ‘purity’ if account is taken of the fact that the goods in question are intended for general use and accordingly for consumers whose level of attention has no special feature such as to influence their perception of the element in question.
49 It follows that, contrary to the Board of Appeal’s view in paragraph 20 of the contested decision, the word element ‘pure’ has a normal degree of distinctiveness, at least for consumers who do not know English.
Dominant character of the word elements ‘nova’ and ‘pure’
50 The Board of Appeal took the view that the word elements ‘nova’ and ‘pure’ were the most dominant elements of the mark applied for. Moreover, it considered that the stylised letters ‘l’ and ‘r’, the inclusion of a full stop after the word ‘pure’ and the other figurative elements of the mark applied for would not be perceived as dominant.
51 The applicant disputes that finding in part. It maintains that the word element ‘pure’ will be perceived as the dominant element of the mark applied for, in so far as it is not only visually prominent but also more distinctive than the word ‘nova’. According to the applicant, the word elements ‘nova’ and ‘pure’ form a whole in the eyes of the Polish consumer, which is, moreover, confirmed by the graphic elements of the mark applied for. The word ‘pure’, it submits, is more important than the word ‘nova’ and is the dominant element or, at least, the important element in the expression ‘nova pure’.
52 OHIM disputes that argument.
53 As regards 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 intrinsic 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 mark (see judgment of 19 June 2012 in H. Eich v OHIM — Arav (H.EICH), T‑557/10, EU:T:2012:309, paragraph 30 and the case-law cited).
54 Owing to their low, or even very low, distinctive character, 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 consumers and to be remembered by them (see judgments of 12 November 2008 in Shaker v OHIM — Limiñana y Botella (Limoncello della Costiera Amalfitana shaker), T‑7/04, ECR, EU:T:2008:481, paragraph 44 and the case-law cited, and in 61 A NOSSA ALEGRIA, cited in paragraph 23 above, EU:T:2010:347, paragraph 49 and the case-law cited). That 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 (judgment of 5 December 2013 in Olive Line International v OHIM — Carapelli Firenze (Maestro de Oliva), T‑4/12, EU:T:2013:628, paragraph 52).
55 In the present case, as regards the word elements of the mark applied for, the view must be taken, as the Board of Appeal stated in paragraph 19 of the contested decision, that the word elements ‘nova’ and ‘pure’ are displayed in contrasting white letters on a circular black background and that they are positioned in the centre of the mark applied for. They are the most dominant elements of that mark. The word element ‘lr’, which consists of the letters ‘l’ and ‘r’, contained in the upper part of the mark applied for, is clearly ancillary, since it is highly stylised and difficult to read. The presence of a full stop after the word element ‘pure’ does nothing further to attract the consumer’s attention. The Board of Appeal did not therefore err in that regard.
56 Although the word ‘nova’ appears in the first part of the mark applied for and it is settled case-law that consumers in general pay more attention to the first part of a mark (see judgment of 28 September 2011 in Nike International v OHIM — Deichmann (VICTORY RED), T‑356/10, EU:T:2011:543, paragraph 38 and the case-law cited), it is not possible to overlook the fact that, first, that element has a low degree of distinctive character in relation to the goods covered, at least for part of the relevant public, and that, secondly, the word element ‘pure’ appears in bold and is inherently more distinctive than the word ‘nova’, as stated above in paragraphs 45 and 49 respectively (see, to that effect, judgment of 6 June 2013 in McNeil v OHIM — Alkalon (NICORONO), T‑580/11, EU:T:2013:301, paragraphs 60 and 61 and the case-law cited).
57 It must be observed that the visual aspect, in that regard, plays an important role. The word elements ‘nova’ and ‘pure’ are written in lower case, in the same size and font and occupy the whole of the central part of the mark applied for, which is visually the most eye-catching.
58 The word elements ‘nova’ and ‘pure’, on account of their position and size in the mark applied for, appear, consequently, likely to make an impression on consumers and to be remembered by them (see, to that effect, judgments of 13 December 2007 in Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, ECR, EU:T:2007:387, paragraph 54, and 14 September 2011 in Olive Line International v OHIM — Knopf (O-live), T‑485/07, EU:T:2011:467, paragraph 85).
59 The two word elements in question are accordingly the only elements to be perceived by the relevant public, notwithstanding that there may be a certain logical connection between them, at least for the part of the relevant public which will understand the concept of newness in the word element ‘nova’. Nevertheless, they each retain an independent distinctive role in the mark applied for (see, to that effect, judgment of 6 October 2005 in Medion, C‑120/04, ECR, EU:C:2005:594, paragraph 30) by reason of their graphic separation and the fact that the word element ‘nova’ potentially has meaning for part of the relevant public.
60 It is therefore in the light of the foregoing findings concerning the distinctive and dominant character of the word elements ‘nova’ and ‘pure’ that it is necessary to consider whether the Board of Appeal was correct in finding that the marks at issue were similar.
Visual comparison of the signs at issue
61 The Board of Appeal took the view that the marks at issue displayed an average degree of visual similarity on account of the identical nature of the common word element ‘nova’, which was of greater importance as being the first element of the mark applied for and the only element comprising the earlier mark. According to the Board of Appeal, that similarity was noteworthy despite several differences between the marks at issue, such as the presence, in the mark applied for alone, of graphic elements and the word element ‘lr’.
62 The applicant disputes that assessment and claims, in essence, that the word element ‘pure’ is more likely to attract the attention of the relevant public. The presence of the common word element ‘nova’, it submits, does not in itself allow for the conclusion that the marks at issue are similar. Moreover, the combination of word and figurative elements in the mark applied for creates, on the contrary, a different visual impression.
63 OHIM disputes the applicant’s arguments.
64 It should be recalled that the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by those marks, bearing in mind, in particular, their distinctive and dominant elements. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of 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).
65 Furthermore, the similarity of the marks at issue must be assessed, first, in relation to the understanding of those marks by the relevant public and, secondly, in relation to the goods or services concerned (see, to that effect, judgment of 9 July 2008 in Coffee Store v OHIM (THE COFFEE STORE), T‑323/05, EU:T:2008:265, paragraph 33 and the case-law cited).
66 It should also be noted that, as already observed in paragraphs 31 and 32 above, the 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, such a comparison must be made by examining each of the marks in question as a whole. 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.
67 As regards, inter alia, the assessment of visual similarity, it should be noted that there is nothing to prevent an assessment of the visual similarity between a word mark and a figurative mark (judgments of 12 December 2002 in Vedial v OHIM — France Distribution (HUBERT), T‑110/01, ECR, EU:T:2002:318, paragraph 51, and 4 May 2005 in Chum v OHIM — Star TV (STAR TV), T‑359/02, ECR, EU:T:2005:156, paragraph 43).
68 It should also be noted that the average consumer of the goods and services in question will break down the word element of a figurative mark into word elements which, for him, suggest a concrete meaning or which resemble words known to him (see judgment of 6 September 2013 in Eurocool Logistik v OHIM — Lenger (EUROCOOL), T‑599/10, EU:T:2013:399, paragraph 104 and the case-law cited).
69 In the present case, it must first be observed that the earlier mark is a word mark consisting exclusively of the word element ‘nova’, whereas the mark applied for is a composite mark, made up of various word and figurative elements.
70 Next, the word element ‘lr’ in the mark applied for is purely decorative and has only a limited impact on the perception of the mark by the relevant public, on account of the fact that it is small and difficult to read, as the Board of Appeal correctly noted in paragraph 22 of the contested decision. Likewise, the Board of Appeal was correct in taking the view, in paragraph 19 of the contested decision, that the presence of a full stop after the word ‘pure’ is not an element capable of attracting consumers’ attention. Those components are accordingly not perceptible by the relevant public.
71 Finally, it should be noted that, for the reasons set out in paragraphs 56 to 59 above, the elements ‘nova’ and ‘pure’ are capable of making an impression on the relevant consumers and of being remembered by them.
72 However, the present case is different to the case relied on by the applicant and which gave rise to the judgment of 8 December 2011 in Aktieselskabet af 21. november 2001 v OHIM — Parfums Givenchy (only givenchy) (T‑586/10, EU:T:2011:722), in terms of the degree of clarity of the logical link between the word elements ‘nova’ and ‘pure’ of the mark applied for. While, in the case relied on by the applicant, the word ‘only’ was intended to reinforce the exclusive nature of the word ‘Givenchy’, it is clear that, in the present case, as OHIM correctly notes, the word element ‘nova’ plays an independent distinctive role in the mark applied for, which is not cancelled out by the presence of the word element ‘pure’ (see paragraph 59 above). Moreover, the graphic representation of the elements ‘nova’ and ‘pure’ on two separate lines differentiates the present case from that relied on by the applicant.
73 Accordingly, the finding of the Board of Appeal in paragraph 22 of the contested decision, to the effect that the marks at issue display a medium degree of visual similarity, must be endorsed.
Phonetic comparison of the marks at issue
74 The Board of Appeal took the view that there was a low degree of phonetic similarity between the marks at issue for the few consumers who would decipher the word element ‘lr’ of the mark applied for and pronounce that mark as ‘lr nova pure’. By contrast, the level of similarity would be average for other consumers because the word common to both marks, ‘nova’, occupies the initial position in the mark applied for.
75 The applicant maintains that the pronunciation of the mark applied for by the Polish public will be ‘lr nova pure’ or, at the very least, ‘nova pure’, on the ground that the prominence of the word element ‘pure’ accentuates the dominant character of that element in the mark applied for.
76 OHIM disputes the applicant’s arguments.
77 In that respect, it should be noted that, in the strict sense, the phonetic reproduction of a composite mark corresponds to that of all its word elements, regardless of their specific graphic features, which fall more within the scope of the analysis of the mark on a visual level. Accordingly, it is not necessary to take into account the figurative elements of the mark applied for for the purposes of comparing the marks at issue from a phonetic perspective (see judgment in EUROCOOL, cited in paragraph 68 above, EU:T:2013:399, paragraph 118 and the case-law cited).
78 The fact that the figurative components are left out of account when comparing the phonetic aspects of the marks makes the similarities between the marks stand out more clearly than in the visual comparison (see judgment of 8 May 2012 in Panzeri v OHIM — Royal Trophy (Royal Veste e premia lo sport), T‑348/10, EU:T:2012:221, paragraph 36 and the case-law cited).
79 The earlier mark is made up of the word element ‘nova’, which consists of two syllables, namely ‘no’ and ‘va’; the mark applied for is, for its part, made up of the word elements ‘lr’, ‘nova’ and ‘pure’, and consists of six syllables, namely ‘l’, ‘r’, ‘no’, ‘va’, ‘pu’ and ‘re’.
80 It follows that, as the applicant submits, the pronunciation of the verbal expression ‘lr nova pure’ of the mark applied for is different to that of the word ‘nova’ of the earlier mark in terms of the presence of the word element ‘lr’ at the start of the expression and the word element ‘pure’ at the end, with the result that the marks at issue have a different length, structure and rhythm.
81 However, it cannot be said, as the applicant appears to suggest, that there is no phonetic similarity between the marks at issue. The differences observed in paragraph 80 above cannot affect the findings of the Board of Appeal, set out in paragraph 23 of the contested decision, to the effect that, first, for consumers who pronounce the word element ‘lr’, the marks at issue have a low degree of phonetic similarity on account of the presence of the word elements ‘lr’ and ‘pure’ in the mark applied for and, secondly, for consumers who do not pronounce the word element ‘lr’, the level of phonetic similarity is average, given the presence in each of the word ‘nova’.
82 The Board of Appeal therefore acted correctly in taking the view that the marks at issue, taken together, display a low, or average, level of phonetic similarity.
Conceptual comparison of the signs at issue
83 The Board of Appeal took the view that neither of the marks at issue has any specific meaning in the relevant territory. However, according to the Board of Appeal, it cannot be ruled out that some consumers might recognise the concept of ‘newness’ in the term ‘nova’, at least when the marks are pronounced, since the word ‘nowa’, meaning ‘new’ in Polish, is pronounced in the same way. According to the Board of Appeal, it follows that the marks at issue are similar overall.
84 The applicant maintains that the word ‘nova’ is not dominant and plays no distinctive and independent role, while the expression ‘nova pure’ forms a logical and conceptual unit with a value that is distinct from the word ‘nova’.
85 OHIM disputes the applicant’s arguments.
86 In that regard, despite the fact that the word element ‘nova’, by itself, cannot be considered to be the dominant element of the mark applied for for the reasons set out in paragraphs 56 to 59 above, it should be noted, as OHIM states, that it is a relevant element for the purposes of the conceptual analysis of the marks at issue, in so far it is not a simple negligible element of the mark applied for.
87 That element will be understood by part of the public addressed as being an adjective (new), unlike the word ‘pure’, which is not commonly used in Poland. It should be noted, in this regard, that although it is true that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, have a real meaning or which resemble words known to him (judgments of 6 October 2004 in Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, ECR, EU:T:2004:292, paragraph 51, and 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 57). As noted in paragraphs 43 and 44, the word ‘nova’ may be understood by part of the relevant public as a reference to the adjective ‘new’. That idea of ‘newness’ is also present in the earlier mark. In that sense, the marks at issue display, at least, conceptual convergence.
88 It is true that the presence of the word element ‘pure’ in the mark applied for, which has no meaning for the public which does not understand English, will lead that public to consider the expression as a whole and to attribute a novel character to the product in question, since the word element ‘nova’ will make a specific addition to the word element ‘pure’, for part of the relevant public at least.
89 However, the additional concept of ‘pure’ which is attached to the mark applied for is not able to supplant the reference to the concept of ‘newness’, which is common to the marks at issue and which will not be influenced by the weak distinctive character of the earlier mark and of the word element ‘nova’ of the mark applied for. That semantic convergence cannot be regarded as being of little or no importance, with the result that there is a degree of conceptual similarity between the marks at issue (see, to that effect, judgment of 20 January 2010 in Nokia v OHIM — Medion (LIFE BLOG), T‑460/07, ECR, EU:T:2010:18, paragraph 58).
90 In the light of the foregoing, it must be held that the Board of Appeal acted correctly in finding that the marks at issue are similar overall.
Likelihood of confusion
91 It is clear from the contested decision that, having regard to the identity of the goods, and the visual, phonetic and conceptual similarity between the marks at issue, in the light of which the weak distinctive character of the mark applied for has no impact, there is a likelihood of confusion between those marks within the meaning of Article 8(1)(b) of Regulation No 207/2009.
92 The applicant submits that the visual, phonetic and conceptual differences between the marks at issue are, despite the fact that the goods in question are identical, sufficient to prevent the similarities between those marks from leading to a likelihood of confusion on the part of the relevant public.
93 OHIM disputes the applicant’s arguments.
94 In that regard, it should be noted, first, that the finding that the earlier mark has weak distinctive character does not, in itself, preclude a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Accordingly, even in a case involving an earlier mark of weak distinctive character, and a trade mark applied for which is not a complete reproduction of it, there may be a likelihood of confusion on account, in particular, of a similarity between the marks and between the goods or services covered (order of 27 April 2006 in L’Oréal v OHIM, C‑235/05 P, EU:C:2006:271, paragraph 53).
95 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and 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 (judgment 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 A likelihood of confusion also exists if, cumulatively, the degree of similarity between the trade marks in question and the degree of similarity between the goods or services covered by those marks are sufficiently high (judgment in MATRATZEN, cited in paragraph 29 above, EU:T:2002:261, paragraph 45).
97 In that regard, it should be noted, first, as stated in paragraphs 23 and 24 above, that the relevant public is the average Polish consumer and the goods covered by the marks at issue are identical. Next, as observed in paragraph 45 above, the earlier mark and the word element ‘nova’ of the mark applied for display, at least for those of the Polish public who will understand them as a reference to the adjective ‘new’, weak distinctive character with regard to the goods covered. Finally, as stated in paragraph 90 above, the marks at issue are similar overall.
98 It follows that the degree of similarity between the marks at issue, the identity of the goods covered by them and the normal level of attention of the relevant public, considered cumulatively, are sufficient for the conclusion that there is a likelihood of confusion. In the context of a global assessment of the marks at issue, the visual, phonetic and conceptual differences between them are not sufficient to rule out any likelihood that the relevant public might believe that the goods covered by those marks come from the same undertaking or from economically-linked undertakings.
99 Accordingly, it must be held that the Board of Appeal did not err in finding that there was a likelihood of confusion between the marks at issue. The plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must therefore be rejected as unfounded. Given the rejection of the first plea, the second plea, alleging infringement of Article 8(5) of Regulation No 207/2009, can only, in any event, be rejected, with the result that the action must be dismissed in its entirety.
Costs
100 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 form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1. Dismisses the action;
2. Orders LR Health & Beauty Systems GmbH to pay the costs.
Kanninen | Pelikánová | Buttigieg |
Delivered in open court in Luxembourg on 26 January 2016.
[Signatures]