JUDGMENT OF THE GENERAL COURT (Second Chamber)
25 June 2013 (*)
(Community trade mark – Opposition proceedings – Application for Community figurative trade mark dialdi – Earlier Community word mark ALDI – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑505/11,
Aldi GmbH & Co. KG, established in Mülheim an der Ruhr (Germany), represented by N. Lützenrath, U. Rademacher, L. Kolks and C. Fürsen, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Dialcos SpA, established in Due Carrare (Italy), represented by B. Saguatti, avocat,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 5 July 2011 (Case R 1097/2010‑2), concerning opposition proceedings between Aldi GmbH & Co. KG and Dialcos SpA,
THE GENERAL COURT (Second Chamber),
composed of N.J. Forwood, President, F. Dehousse and J. Schwarcz (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 26 September 2011,
having regard to the response of OHIM lodged at the Court Registry on 29 March 2012,
having regard to the response of the intervener lodged at the Court Registry on 16 March 2012,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur and pursuant to Article 135a of the Rules of Procedure of the Court, to give a ruling without an oral procedure,
gives the following
Judgment
Background to the dispute
1 On 7 July 2006, the intervener, Dialcos SpA, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The trade mark in respect of which registration was sought is the figurative sign reproduced below:
3 The goods for which registration was sought fall in Classes 29 and 30 of the Nice Agreement concerning the International Classification of Goods and Services for the purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, following the modification made during the administrative proceedings before OHIM, for each of those classes, to the following description:
– Class 29 – ‘Dietetic preparations for special diets in particular gluten-free preparations for making bouillon, gluten-free sauces’;
– Class 30 – ‘Dietetic preparations for special diets in particular gluten-free flour, gluten-free pasta, gluten-free cereals, gluten-free biscuits, gluten-free preparations for bread, pizza, pastry and confectionery, prepared dishes (risottos, soups, pasta)’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 50/2006 of 11 December 2006.
5 On 12 March 2007, the applicant, Aldi GmbH & Co. KG, filed a notice of opposition to the registration of the mark applied for, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), in respect of the goods referred to in paragraph 3 above.
6 The opposition was based on the Community word mark ALDI, which was filed on 27 December 2000 and registered on 14 April 2005 under No 2071728 in respect of, inter alia, the goods in Classes 29 and 30 corresponding, for each of those classes, to the following description:
– Class 29 – ‘Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jams and jellies; eggs, milk and milk products, in particular butter, cheese, cream, quark, yoghurt, kefir (milk beverage), desserts having consistencies ranging from soft to frothy, made from milk and milk products with the addition of substances to create a consistency, such as food starch, gelatine and vegetable based thickeners and gelling agents, flavourings such as cocoa, coffee extract, fruit ingredients, and natural and/or artificial flavourings; edible fats and emulsifiers; edible oils and fats; meat, fish, fruit and vegetable preserves’;
– Class 30 – ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder, salt, mustard; vinegar; sauces; spices; ice’.
7 The ground relied on in support of the opposition was that specified in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009). The applicant also raised the argument that the earlier mark had a reputation in the majority of the Member States of the European Union and, therefore, was highly distinctive.
8 By decision of 30 April 2010, the Opposition Division rejected the opposition on the ground that there was no likelihood of confusion between the marks at issue due to their manifest differences, notwithstanding the fact that the goods covered were identical. According to the Opposition Division, the possible highly distinctive character of the earlier mark cannot alter that finding.
9 On 17 June 2010, the applicant lodged an appeal against the Opposition Division’s decision.
10 By decision of 5 July 2011 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. The Board of Appeal considered, in essence, that it was apparent from an overall assessment of the marks at issue from a visual, phonetic and conceptual point of view that they were not similar. Therefore, it was, according to the Board of Appeal, highly unlikely that the relevant consumers would confuse the trade marks or believe that the goods covered by the marks at issue came from the same undertaking, even if the relevant goods were identical. According to the Board of Appeal, that finding would have remained the same even if the applicant had proved the enhanced distinctiveness of its earlier trade mark.
Forms of order sought
11 The applicant claims that the General Court should:
– annul the contested decision;
– order OHIM to pay the costs.
12 OHIM contends that the General Court should:
– dismiss the action in its entirety;
– order the applicant to pay the costs.
13 The intervener claims that the General Court should:
– uphold the contested decision and dismiss the action;
– order the applicant to pay the costs.
Law
Admissibility of Annexes A 4 to A 9 to the application
14 The intervener claims that some of the documents submitted by the applicant before the General Court, namely, Annexes A 5 to A 9 to the application, are inadmissible, in so far as they are in German or Italian and have not been accompanied by a translation into the language of the proceedings, which, in the present case, is English.
15 In that regard, it is appropriate to point out that the documents referred to in the above paragraph seek to show that the earlier trade mark was used intensively and, in certain countries, in conjunction with the prefix ‘di’, within the meaning of the expression ‘di aldi’, meaning, according to the applicant, ‘by aldi’ or ‘from aldi’ in Italian, Spanish or Portuguese. It is apparent from an analysis of the administrative file of the proceedings before OHIM that those documents were submitted for the first time before the General Court.
16 The same conclusion applies to Annex A 4 to the application, concerning the documents in Spanish, the purpose of which was to support the applicant’s claim that the earlier mark has been used intensively within the territory of the European Union and, more particularly, in Spain.
17 It is also apparent from the abovementioned administrative file that the applicant claimed, among other arguments put forward before the Opposition Division and supported by certain items of evidence, firstly, that the earlier mark must be regarded as highly distinctive and, secondly, in order to substantiate the existence of phonetic similarities between the marks at issue, that the earlier mark was often presented in conjunction with the prefix ‘di’, meaning ‘by’ or ‘from’ in Spanish, Italian and in Portuguese, that is to say, as the mark di ALDI.
18 In such circumstances, it was for the applicant to provide, from the stage of the proceedings before OHIM, on those precise points, where necessary, the totality of the evidence in support of the relief sought (see, by analogy, Case T-303/03 Lidl Stiftung v OHIM – REWE Zentral (Salvita) [2005] ECR II‑1917, paragraph 76].
19 Therefore, it must be stated that the documents submitted as Annexes A 4 to A 9 to the application are inadmissible, in so far as the purpose of the action before the General Court is to seek review the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009, so it is not the General Court’s function to review the facts in the light of documents produced for the first time before it. Accordingly, the abovementioned documents must be rejected, without its being necessary to assess their probative value (see, to that effect, judgment of 14 April 2010 in Case T-514/08 Laboratorios Byly v OHIM – Ginis (BILLY’s Products), not published in the ECR, paragraph 44 and the case-law cited), or to give a ruling on the intervener’s argument relating to the absence of any translation into the language of the proceedings.
Substance
20 The applicant disputes the assessment of the similarity of the signs made by the Board of Appeal and claims that the Board of Appeal was wrong to conclude that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
21 OHIM and the intervener contest the applicant’s arguments.
22 As set out in Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trade mark and because of the identity or similarity of the goods or services covered by the two trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
23 In accordance with settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. According to the same line of authority, the likelihood of confusion must be assessed globally, in accordance with the perception of the relevant public of the signs and goods or services in question, taking into account all relevant factors, and in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 32 and the case-law cited).
24 For the purposes of that global assessment, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but has to rely on the imperfect image of them that he has retained in his mind. 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 GIORGIO BEVERLY HILLS, paragraph 33 and the case-law cited).
25 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
26 Furthermore, the more distinctive the earlier mark, the greater will be the likelihood of confusion. Thus, marks with a highly distinctive character, either inherently or because of the reputation they possess on the market, enjoy more extensive protection than marks with a less distinctive character. The distinctive character of the earlier trade mark, and in particular its reputation, must therefore be taken into account when assessing whether there exists a likelihood of confusion (see judgment of 17 April 2008 in Case C-108/07 P Ferrero Deutschland v OHIM, not published in the ECR, paragraphs 32 and 33 and the case-law cited, and judgment of 28 October 2010 in Case T-131/09 Farmeco v OHIM – Allergan (BOTUMAX), not published in the ECR, paragraph 67).
27 Finally, where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks in dispute by the consumer of the goods or services in question in that territory. However, it should be noted that, for a Community trade mark not to be registered, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (see, to that effect, Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast‑Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II‑5409, paragraph 76 and the case-law cited).
28 It is appropriate in the present case to examine the applicant’s single plea in law in the light of the principles set out in paragraphs 22 to 27 above.
The relevant public and its level of attention
29 It must be noted that, according to case-law, the relevant public is composed of users likely to use both the goods or services covered by the earlier mark and those covered by the mark applied for (see judgment of 30 September 2010 in Case T‑270/09 PVS v OHIM – MeDiTA Medizinische Kurierdienst (medidata), not published in the ECR, paragraph 28 and the case-law cited). As a general rule, where the goods or services covered by one of those marks are included in the larger designation of the other mark, the relevant public is defined by reference to the more specific wording (medidata, paragraph 28).
30 The Board of Appeal established, at paragraph 18 of the contested decision, first of all, that since the earlier mark is a Community trade mark, the relevant public must be found in all the Member States of the European Union. Next, it considered that, in so far as the goods at issue are intended for all consumers, the relevant public is composed of the average consumer, who is deemed to be reasonably well-informed and reasonably observant and circumspect.
31 The applicant concurs with the definition, given by the Board of Appeal, of the territory by reference to which the relevant public must be assessed, but, by contrast, implicitly departs from its definition as to the level of awareness of that public, in so far as it refers to a consumer whose level of attention is low.
32 OHIM submits, first of all, that it is not disputed that the relevant public is composed of the average European consumer of the goods in Classes 29 and 30, whose level of attention is ‘average’. Next, OHIM contends that those consumers would not be guided by the vagaries of an imperfect recollection but, on the contrary, that they would demonstrate ‘reasonable care’ when acquiring ‘dietetic preparations, on grounds of health‑related considerations as well as personal preferences, as well as the expected effect of the products’.
33 The intervener claims that the relevant public to which the gluten-free products, covered by the trade mark application, is composed of persons who have particular dietary and health needs and who are, therefore, usually very careful and attentive in making their choices.
34 In that regard, it is appropriate to note that the Board of Appeal was correct in considering the goods at issue to be intended for all consumers. It is reasonable to assume that any consumer, that is to say, even a consumer not belonging to the more limited category of persons who have particular dietary and health needs, may purchase, at least occasionally, the goods at issue, namely, ‘dietetic preparations for special diets…’. That is particularly the case in so far as such a definition can include a wide range of food products, such as sugar-free products, products which are low in sugar or without added sugar, fat‑free products, low sodium or low salt products, products without colours or additives, and other products whose nutritional value is reduced.
35 As regards, more particularly, the intervener’s claim, referred to in paragraph 33 of the present judgment, that claim is based on the erroneous premise that the common denominator of all the goods covered by the trade mark application is that they are gluten-free. It is important to note that the use of the expression ‘in particular’, to introduce, in the context of the trade mark application, a list of certain gluten-free goods, clearly indicates that those goods are only included in the definition of the goods covered as examples and that, moreover, they fall within the general designation of ‘dietetic preparations for special diets’ (see, to that effect, Case T-224/01 Durferrit v OHIM – Kolene (NU TRIDE) [2003] ECR II‑1589, paragraph 41 and the case-law cited). Therefore, the intervener’s claim must be rejected as irrelevant for the purposes of defining the relevant public and its level of attention, which cannot be assessed if only part of the goods at issue in the present case are taken into consideration.
36 Therefore, it is in the light of the nature of all the goods covered by the trade mark application, namely, ‘dietetic preparations for special diets …’, that it is appropriate to assess whether the Board of Appeal was correct in finding that the relevant public is composed of average consumers who are reasonably well-informed and reasonably observant and circumspect.
37 In that regard, it must be noted, first of all, that those goods cannot be considered to be products with certain potential hazards, requiring, by that fact alone, a higher level of attention from consumers during the purchase, in the manner of, for example, pharmaceutical products. Unlike those products, they are in no way perceived as medicines nor are they obtained on medical prescription, even though certain dietetic preparations for special diets may be sold in pharmacies.
38 Thus, even though part of the relevant public demonstrates a higher level of attention when purchasing some of the abovementioned goods, in view of the necessity, for some consumers, of following a special diet or, for others, as observed by OHIM before the General Court (see paragraph 32 of the present judgment, in fine), simply due to the importance of diet and health for them, it must nevertheless be held that, taking account of the wide range of dietetic preparations for special diets, the group of average consumers of this category of product, whilst including attentive and knowledgeable consumers, does not in any way consist exclusively of such consumers (see, to that effect, judgment of 28 March 2012 in Case T-41/09 Hipp v OHIM – Nestlé (Bebio), not published in the ECR, paragraph 29 and the case-law cited).
39 It follows that the Board of Appeal was correct in holding that the relevant public is composed of average consumers who are reasonably well-informed and reasonably observant and circumspect. Since the earlier mark is a Community trade mark, the relevant territory is that of the European Union, as established by the Board of Appeal.
The similarity of the goods at issue
40 It is apparent from the contested decision, in particular from paragraphs 32 and 33, that the Board of Appeal did not carry out an assessment of the similarity of the goods at issue, but immediately considered that, due to the substantial differences between the marks at issue, even a possible identity of goods could not alter the finding that there was no likelihood of confusion of those marks.
41 Before the General Court, both the applicant and OHIM start from the premise that the goods at issue are identical. By contrast, the intervener claims that there are relevant differences between the goods covered by the marks at issue. In support of this claim, the intervener puts forward, firstly, that the ‘gluten-free’ goods covered by the mark applied for are intended for a public different from that which purchases the goods protected by the earlier mark. Secondly, the intervener claims that the distribution channels of the goods concerned are also different.
42 It must be stated, in addition to the fact that it has already been held, at paragraphs 34 and 35 of the present judgment, that the intervener starts from an erroneous premise in considering that the goods covered by the mark applied for are restricted to those not containing gluten, that its claim as referred to in the preceding paragraph consists, in essence, of a request for an amendment of the contested decision as regards the issue of the similarity of the goods.
43 In that regard, it is appropriate, first of all, to point out that the review carried out by the General Court under Article 65 of Regulation No 207/2009 is a review of the legality of the decisions of the Boards of Appeal of OHIM and that the General Court may annul or alter a decision against which an action has been brought only if, at the time the decision was adopted, it was vitiated by one of the grounds for annulment or alteration set out in Article 65(2) of that regulation (see, to that effect, Case C-263/09 P Edwin v OHIM [2011] ECR I‑0000, paragraph 71 and the case-law cited).
44 It follows that the power of the General Court to alter decisions does not have the effect of conferring on that Court the power to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position. Exercise of the power to alter decisions must therefore, in principle, be limited to situations in which the General Court, after reviewing the assessment made by the Board of Appeal, is in a position to determine, on the basis of the matters of fact and of law as established, what decision the Board of Appeal was required to take (Edwin v OHIM, paragraph 72).
45 However, as noted at paragraph 40 of the present judgment, in so far as the Board of Appeal did not, in the contested decision, undertake any assessment of the similarity of the goods at issue, and whereas it cannot be inferred from that decision that the Board of Appeal adopted the assessment made, on that point, by the Opposition Division, the General Court considers it appropriate to rule directly on the lawfulness of the Board of Appeal’s finding that there is no likelihood of confusion between the marks at issue due to the existence of significant differences between those marks, notwithstanding the possible identity of the goods covered.
46 Subsequently, if it is found that the lawfulness of the Board of Appeal’s finding, referred to in the previous paragraph, is vitiated by one of the grounds for annulment raised by the applicant, it is for the Board of Appeal to draw the appropriate inferences from the operative part of the present judgment and from the grounds on which it is based (see, to that effect, judgment of 9 December 2009 in Case T-486/08 Earle Beauty v OHIM (SUPERSKIN), not published in the ECR, paragraph 9 and the case-law cited).
The distinctive character of the earlier mark
47 Nor it must be pointed out, as is apparent from paragraph 34 of the contested decision, the Board of Appeal also did not consider it necessary, in the circumstances of the present case, to assess whether the applicant had succeeded in demonstrating the enhanced distinctiveness of the earlier mark as a result of its use, or even its renown. According to the Board of Appeal, in any event, any likelihood of confusion had to be excluded in the absence of similarities between the marks at issue.
48 Therefore, for reasons similar to those referred to in paragraphs 45 and 46 of the present judgment, the General Court holds that it is not for it, at this stage, to answer the applicant’s claim that the earlier mark enjoys enhanced distinctiveness due to use, or even, that the earlier mark has a reputation in the majority of the Member State of the European Union and, even more particularly in Germany. Even on that point, it is for the Board of Appeal to assess, if necessary, the measures required to implement the present judgment.
The global comparison of the signs at issue
49 Two marks are similar, for the purposes of Article 8(1)(b) of Regulation No 207/2009 when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (see Case T‑286/02 Oriental Kitchens v OHIM – Mou Dybfrost (KIAP MOU) [2003] ECR II‑4953, paragraph 38 and case-law cited).
50 The global assessment of the likelihood of confusion, as regards the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global 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 (Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35).
51 The assessment of the similarity between two marks means more than merely 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 in question 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. 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. That could be the case, in particular, where that component is capable alone of dominating the image of that mark which members of the relevant public keep in their minds, so that all the other components of the mark are negligible in the overall impression created by it (see Case T‑7/04 Shaker v OHIM – Limiñana y Botella (Limoncello della Costiera Amalfitana shaker) [2008] ECR II-3085, paragraph 40 and the case-law cited).
52 Furthermore, there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have graphic form capable of creating a visual impression (see Case T‑359/02 Chum v OHIM – Star TV (STAR TV) [2005] ECR II‑1515, paragraph 43 and case-law cited).
53 At paragraphs 22 to 30 of the contested decision, the Board of Appeal considered, in essence, that the marks at issue were visually and phonetically different and that, conceptually, neither of the signs had meaning in any of the languages of the relevant territory, and that, even if it was necessary to take account of the English or Spanish meaning of the first part of the mark applied for, ‘dial’, that would assist in differentiating between the marks at issue.
54 More particularly, visually, the Board of Appeal noted that, while the earlier mark ALDI was a word mark, the mark applied for dialdí was a ‘slightly figurative’ mark. According to the Board of Appeal, the marks at issue coincide in the letters ‘a’, ‘l’, and ‘d’, but differ in the number of letters in their beginning and in their final letter. The Board of Appeal also pointed out that, in the mark applied for, the initial letters ‘d’, ‘i’, ‘a’ and ‘l’ differed from the final letters ‘d’ and ‘i’ due to the typeface used, as the first letters were written in a ‘fairly common’ typeface, whereas the other letters were in a ‘fanciful’ typeface. Thus, those two parts of the mark applied for were, according to the Board of Appeal, highly likely to be perceived as being two separate elements.
55 As regards phonetics, the Board of Appeal took the view that the earlier sign would be pronounced as ‘al-di’, while the contested mark would be pronounced as ‘di-al-dí’, with the accent being clearly placed, at least in some European languages, on the last letter, ‘í’, which, according to the Board of Appeal, could influence the pronunciation of the sign. According to the Board of Appeal, in addition to the fact that the signs have different number of syllables, it is important to note that, although the signs coincide in the syllable ‘al’ and share a ‘highly similar’ last syllable, ‘di/dí’, they differ on account of the presence of an additional first syllable in the mark applied for.
56 Therefore, as regards the visual and phonetic comparison of the signs, the Board of Appeal took the view that, in the light of the manner in which the mark applied for is split in two by the typefaces used, ‘it would … require a considerable stretch of the imagination [to consider] the last four letters of the mark applied for [to be] the dominant component in the overall impression created by that mark, let alone in isolation, especially from a visual point of view’. The Board of Appeal then considered that, due to the fact that the mark applied for was relatively short and that the consumer’s attention is usually directed at the beginning of words, it is appropriate to start from the premiss that, in the comparison of the marks, the expression ‘dialdí’ must be considered as a whole in which greater emphasis is accorded to the elements appearing at the beginning.
57 In conclusion, from a visual point of view, the Board of Appeal considered that the different beginnings of the signs as well in the number of letters in the signs at issue counterbalanced their similarities, so that, globally, the signs were different. The Board of Appeal stated in particular in that regard that, in short signs, even small differences may frequently lead to a different overall impression. Phonetically, according to the Board of Appeal, the same is true as regards the marks at issue, on account of the differences in the number of syllables, in certain letters, and, finally, taking into account the fact that consumers would easily perceive the differences at the beginning of the marks.
58 Conceptually, the Board of Appeal found, first of all, that neither of the marks at issue had meaning in any of the languages of the relevant territory. Next, the Board of Appeal rejected the applicant’s claim that the prefix ‘di’ of the mark applied for meant ‘from’ or ‘by’ in Italian, Spanish and Portuguese as unfounded. According to the Board of Appeal, the element to be examined as a whole is ‘dial’, on account of the separation, by the different typefaces used, of the final part of the mark applied for, ‘dí’. The Board of Appeal submitted that there was no evidence that the mark would be pronounced ‘di – aldí’. Finally, as regards the possible meanings of the term ‘dial’, the Board of Appeal confirmed that both the meaning of the corresponding word in English, namely, a ‘dial’ of a radio and in Spanish, namely, ‘relative to one day’ in Spanish, would help in differentiating the marks at issue, if they were noticed by the relevant public.
59 The applicant claims, in essence, that the marks at issue exhibit an average degree of visual similarity since the earlier mark is included in the mark applied for. According to the applicant, the relevant public would not notice the difference linked to the specific graphic representation of the final element ‘dí’ of the mark applied for. Phonetically, the similarities would be still clearer, irrespective of whether the dominant element of the mark applied for is ‘aldi’ and the other element of the sign, ‘di’, is secondary in the overall assessment. The applicant claims that, even though the mark applied for begins with the letters ‘d’ and ‘i’, those letters would be barely noticeable aurally in certain languages, such as Italian, Spanish or Portuguese, which would result in the phonetic identity of the marks. According to the applicant, a considerable part of the relevant public would place the accent on the second last syllable of the mark applied for, particularly since the initial element ‘di’ will be perceived at least by the Italian, Spanish and Portuguese public as the prefix ‘di’ indicating the commercial origin of the product.
60 OHIM claims that the Board of Appeal’s analysis is correct. In essence, it concurs with the approach that the contrast between the typefaces used in the first and second parts of the mark applied for clearly divides that mark into two constitutive components, which would not go unnoticed by the relevant public, but, on the contrary, would play a decisive role in the overall visual impression. The first of those elements, ‘dial’, constitutes an indivisible unit, so that not even Italian, Portuguese or Spanish consumers would isolate the two initial letters ‘d’ and ‘i’. In that regard, OHIM claims that the stylistic differences of the figurative elements cannot summarily be dismissed as negligible for the purposes of the comparison of the signs to the extent to which they can add to the differentiation between them or even contribute to a different overall impression, and this regardless of whether the words to which that different stylisation is applied are identical in whole or in part (see, to that effect, Case T-3/04 Simonds Farsons Cisk v OHIM – Spa Monopole (KINJI by SPA) [2005] ECR II‑4837, paragraphs 41 to 43, and judgment of 8 February 2007 in Case T-88/05 Quelle v OHIM – Nars Cosmetics (NARS), not published in the ECR, paragraph 61). In the present case, OHIM claims that the fanciful presentation of the mark applied for contributes, together with its two initial letters, to distinguish it from the earlier mark. Also taking into account the fact that they are relatively short word marks, in which the differences are more easily perceived, and pointing out that the General Court has already held that, in the case of short signs, even a difference consisting of a single consonant will preclude a finding that there is a high degree of visual similarity between the two signs (see judgment of 16 January 2008 in Case T‑112/06 Inter-IKEA v OHIM – Waibel (idea), not published in the ECR, paragraph 54 and the case-law cited), OHIM concludes that the marks at issue, considered in their entirety, are not visually similar.
61 Phonetically, OHIM concurs, in essence, with the Board of Appeal’s assessment (summarised at paragraph 55 above). OHIM adds that it is apparent from the contested decision that the Board of Appeal did not exclude that, in certain European languages, the accent could fall on the second syllable of the mark applied for. If that were the case, it would be undeniable, according to OHIM, that the degree of phonetic similarity between the marks at issue would be ‘somewhat more evident’. Nevertheless, according to OHIM, the aural aspect plays a lesser role when it comes to goods such as those concerned in the present case, which are normally bought upon a visual exposure to the products, their packaging and brands. OHIM considers that the contested decision has points of contact with the judgment of 13 February 2008 in Case T-146/06 Sanofi‑Aventis v OHIM – GD Searle (ATURION), not published in the ECR, paragraphs 49 to 57, even though the latter concerns medicines. It is appropriate to draw the conclusion from that case that the presence of two additional letters at the beginning of one of the signs at issue is sufficient to confer a different visual and aural overall impression in the minds of consumers.
62 Finally, on a conceptual level, OHIM submits that the Board of Appeal’s conclusion that the marks at issue did not have a clear meaning is not disputed.
63 The intervener agrees, in essence, with the comparison of the signs at issue and OHIM’s arguments, and concurs with the Board of Appeal’s findings from a visual and phonetic point of view in particular. As regards the visual comparison of the marks at issue, the intervener submits, inter alia, that the ‘dial’ part of the mark applied for is dominant, due to its placement at the beginning of the mark and in the light of the different typefaces used. As regards the sequence of letters ‘a’, ‘l’, ‘d’ and ‘í’, the relevant consumers will not perceive it separately. Therefore, the marks at issue produce a different overall impression, perceived all the more easily as they are short signs. As regards the phonetic comparison of the marks at issue, the intervener claims that it has not been proven that the mark applied for would be pronounced ‘di - aldí’. On the contrary, according to the intervener, the accent falls on the last syllable, as that accent is also represented graphically.
64 The General Court finds, first of all, that it is undisputed that the mark applied for is a figurative mark composed of six black letters on a white background, whereas the earlier mark is a word mark.
65 In that regard, it is appropriate to state that a figurative mark is a specific representation of word or graphic characteristics or a combination of word and graphic elements, whether or not in colour (see, to that effect, Case T-211/03 Faber Chimica v OHIM – Industrias Quimicas Naber (Faber) [2005] ECR II‑1297, paragraph 33). By contrast, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element. The protection which results from registration of a word mark concerns the word mentioned in the application for registration but not any of its specific graphic or stylistic elements (see judgment of 22 May 2008 in Case T‑254/06 Radio Regenbogen Hörfunk in Baden v OHIM (RadioCom), not published in the ECR, paragraph 43 and case-law cited).
66 First, in the present case, it is appropriate to consider from the outset, like the applicant, that the Board of Appeal gave exaggerated attention to the graphic differences between the four first and two last letters of the mark applied for.
67 Admittedly, while it is true that the two final letters of the mark applied for are written in lower-case letters in a typeface which differs from that used for its first four letters, and that it can be considered that the letters ‘d’ and ‘í’ lend it a ‘fanciful’ note, as pointed out by the Board of Appeal, the fact remains that the letters are nearly identical in size, are the same colour, black, and, finally, their graphic forms, although stretched, retain significant points in common with the other characters, inter alia the size of the letter used. In addition, it is appropriate to emphasise the fact that, in their presentation, the two last letters of the mark applied for are not separated by a space from the 4 first letters, but that, by contrast, the letter ‘l’ and the second letter ‘d’ of the mark applied for are intertwined, one partially jutting over the other and hiding it. In addition, all the letters of the mark applied for follow the same horizontal line.
68 In those circumstances, the General Court considers that it cannot be assumed that the relevant public is ‘highly likely’ to perceive the first four letters of the mark applied for as an element separate from the two final letters, as is suggested, in essence, in paragraphs 23 and 25 of the contested decision, in which the Board of Appeal emphasises the ‘split’ nature of the mark applied for. On the contrary, the starting point for considering this issue should be that, at least, a significant part of the relevant public will perceive the mark applied for as a whole, those consumers being, furthermore, capable of reading the two last letters of that mark, irrespective of whether or not they give their attention to the slightly fanciful graphic form.
69 Second, as regards the visual comparison of the mark applied for, taken as a whole, with the earlier mark, it cannot be held that the differences, put forward by the Board of Appeal, counterbalance or even outweigh, in significance, their similarities. It is appropriate to state simply, in that regard, that, in so far as the graphic form used for the last letter of the mark applied for does not make it possible to distinguish, without a doubt, whether it is the letter ‘i’ or ‘í’, the stretched nature of the graphic form making this differentiation difficult, the earlier mark may be regarded as being reproduced in its entirety in the mark applied for, thus constituting the larger part, that is four letters out of six, of the trade mark applied for. Even for those consumers who notice that the final letter is not the same in the marks at issue, that difference is considered minimal.
70 In those circumstances, in so far as it has already been held, in paragraphs 67 and 68 above, that the mark applied for would be read as a whole, at least by part of the relevant public, notwithstanding the presence of the specific graphic form of the letters ‘d’ and ‘í’, it is appropriate to consider that even the presence of the additional two letters at the beginning of the mark applied for does not set aside the conclusion that the marks at issue must be regarded as being somewhat visually similar, to a degree which can be classified, as the applicant claims, as medium. In that regard, it must be pointed out that, as a general rule, in respect of word marks which are relatively short, such as those in the present case, the central elements are as important as the elements at the beginning and end of the sign (see Case T-273/02 Krüger v OHIM – Calpis (CALPICO) [2005] ECR II‑1271, paragraph 39 and the case-law cited).
71 That finding concerning the existence of a certain visual similarity is not invalidated by the various references by OHIM to the judgments of the General Court cited in paragraph 60 of the present judgment, in which the General Court stressed the importance that the stylistic differences of the figurative elements can have in the marks compared. It must be noted that, although, in the present case, it had been found that the graphic form of the mark applied for was not particularly striking and could not, alone, make it possible to conclude that there are obvious visual differences between the marks at issue, in the judgments cited, by contrast, at least one of the marks at issue contained graphic elements which were more striking and more eye-catching for consumers and thus contributed to differentiating that mark from the other analysed marks.
72 Firstly, in KINJI by SPA, referred to at paragraph 60 above (in particular paragraphs 41 to 43), the General Court held, inter alia, the presence, in the complex figurative mark applied for, not only the word ‘kinji’ written in bold stylised script in the form of bamboo sticks, but also the figurative element of a jumping raccoon wearing a T-shirt bearing the name ‘kinji’. That led the General Court to distinguish the mark applied for from the earlier work mark KINNIE, having no particular graphic or figurative features.
73 Secondly, an analogous situation arose in NARS, referred to at paragraph 60 above (in particular paragraphs 60 and 61). Firstly, the General Court, having compared the two marks at issue which were both figurative, held that they had ‘very different’ fonts. Secondly, it was noted that the graphic element of the earlier marks, namely ‘a dark globe and within it two white curved lines through which an arrow-like figure cuts’, was dominant within the overall visual impression made by them and was not present in the representation of the mark applied for.
74 Finally, as regards idea, referred to at paragraph 60 above, it need merely be pointed out, first, that unlike the present case, the mark applied for was a complex mark composed not only of the word element ‘idea’, but also of a figurative element and that the General Court, nevertheless, concluded that there was a certain degree of visual similarity, albeit ‘low’. Secondly, in so far as OHIM refers to the statement made in paragraph 54 of idea, paragraph 60 above, that in the case of relatively short word signs, even a difference consisting of a single consonant will preclude a finding that there is a ‘high degree’ of visual similarity between the two signs, it is enough to note that, in the present case, it has been pointed out that there is an ‘medium’ degree of visual similarity (see paragraph 70 above).
75 From the phonetic point of view, it must be stated that OHIM correctly pointed out before the General Court that it is implicit from the contested decision that when the mark applied for is pronounced, in certain relevant languages, the accent could fall on the second syllable. It follows, as OHIM also acknowledges, that the degree of phonetic similarity between the marks is ‘somewhat more evident’. Firstly, for the part of the relevant public who do not notice that the difference in the final letters of the marks at issue (see paragraph 69 of the present judgment), the pronunciation of the two last syllables of the mark applied for would correspond to that of the earlier mark, and, secondly, for the rest of that public, the pronunciation of those syllables would be highly similar, for it is probable for the accent to fall on the same syllable ‘al’. Therefore, in the global assessment of the marks at issue from a phonetic point of view, it is appropriate to also conclude that there is a certain similarity, notwithstanding the presence of the two initial letters ‘d’ and ‘i’ in the mark applied for.
76 Furthermore, that perception of similarity would be only the stronger in that part of the relevant public, which, in certain languages such as Italian, Spanish or Portuguese, would, possibly, treat the prefix ‘di’ in the mark applied for as an indication of the origin of the goods at issue and would not, therefore, pronounce it in a particularly strong manner, as the applicant claims, or would not take it into particular account in memorising the mark at issue. Even though the applicant’s evidence to that effect has been held to be inadmissible, the fact remains that it was for the Board of Appeal to assess the likelihood of such a situation, the relevant public including consumers who speak the above languages and the applicant raising that argument in the administrative proceedings, further supporting it, before the Opposition Division, by a reference to a decision of the Second Board of Appeal in Case R 454/2007-2 LEO v DILEO. However, the Board of Appeal took a decision, in that regard, only at paragraph 29 of the contested decision concerning the assessment of the conceptual similarities on the basis of an erroneous premiss (see paragraph 66 to 68 above), that ‘the element to be examined is “dial”, read both visually and aurally as one whole, given that it is separated by the different typeface from the ending “dí”’ of the mark applied for.
77 The conclusion, referred to in the two preceding paragraphs, concerning the existence of a certain phonetic similarity between the marks at issue, is invalidated neither by OHIM’s reference to the manner in which the goods at issue are marketed, which will be assessed below when assessing the likelihood of confusion, nor by the reference made to ATURION, paragraph 61 above (paragraphs 49 to 57). Firstly, that judgment concerns longer marks than those at issue in the present case and a relevant public having a high level of attentiveness, the situations in question thus being only partially comparable. Secondly, unlike the present case (see paragraph 75 above), the General Court held, at paragraph 53 of the judgment in ATURION, paragraph 61 above, that the signs at issue had only one syllable in common, in that instance the last, and that the applicant was therefore wrong in claiming that the two last syllables of the mark applied for and the earlier mark were identical.
78 Finally, as regards the conceptual comparison, it is undisputed that the marks at issue, taken as a whole, have no clear meaning in any of the languages of the relevant territory.
The likelihood of confusion
79 The applicant claims that, in making an overall assessment of the identity of the goods, the enhanced distinctive character of the earlier mark and the significant visual, and more particularly, phonetic similarity of the marks at issue, it is appropriate to conclude that there is a likelihood of confusion. Phonetically, the applicant claims, inter alia, that the addition of the prefix ‘di’ to the mark applied for cannot reliably exclude a likelihood of confusion and that the graphic presentation of that mark has no effect on its pronunciation.
80 OHIM contends, first of all, that the applicant insists on the phonetic similarity of the marks pointing out that it suffices to create a likelihood of confusion. However, according to OHIM, there is not necessarily a likelihood of confusion each time that mere phonetic similarity between the two signs is established (see, to that effect, Case C-206/04 P Mühlens v OHIM [2006] ECR I‑2717, paragraphs 21 and 22).
81 Next, OHIM submits that the degree of phonetic similarity between two marks is of less importance in the case of goods marketed in such a way that the relevant public, when making a purchase, usually perceives visually the mark designating those goods (see, to that effect, Case T‑292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II‑4335, paragraph 55). That is the case here, since the goods concerned are usually sold side-by-side in drugstores, supermarkets, department stores and retail outlets.
82 According to OHIM, in those circumstances, on account of the significant visual and phonetic differences between the goods at issue, the reasonably attentive relevant public would not, as a whole, conclude that the signs were similar. Therefore, in so far as similarity of the similarity of the signs is a sine qua non for the application of Article 8(1)(b) of Regulation No 207/2009, OHIM contends that the identity between the goods is irrelevant, as is the possible enhanced distinctive character of the earlier trade mark, and even its renown in Germany or other Member States of the European Union (see, to that effect, Case C‑254/09 P Calvin Klein Trademark Trust v OHIM [2010] ECR I‑7989, paragraph 53 and the case-law cited).
83 The intervener agrees, in essence, with the terms of the contested decision and contends, inter alia, that the relevant consumers, having a ‘particularly high’ level of attentiveness, would not be misled in the presence of visually and phonetically differing marks. In addition, the intervener emphasises the ‘dominant’ character of the first part of the mark applied for, ‘dial’.
84 The General Court points out, first of all, that the applicant does not base its claims, concerning the existence of a likelihood of confusion, solely on the phonetic similarity between the goods at issue, as could be understood from the line of argument advanced by OHIM in response, but that it requests the General Court to carry out an overall assessment. Thus, in the light of the principles set out in paragraphs 22 to 27 above, the question of the lawfulness of the contested decision is not confined to whether the single phonetic similarity permits the conclusion that there is a likelihood of confusion, but rather it is appropriate to take into account all the relevant factors in the present case.
85 Next, as regards the references made by OHIM to the case-law resulting from BASS, paragraph 81 above (paragraph 55), according to which the degree of phonetic similarity between two marks is of less importance in the case of goods marketed in such a way that the relevant public, when making a purchase, usually perceives visually the mark designating those goods, it is appropriate to point out that the purpose of the action before the General Court is to review the legality of decisions of the Boards of Appeal of OHIM within the meaning of Article 65 of Regulation No 207/2009. Furthermore, Article 135(4) of the Rules of Procedure of the General Court provides that the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal.
86 In the present case, it is apparent from the contested decision that the Board of Appeal did not analyse the usual marketing channels of the goods at issue, in order to assess the significance to be accorded to the different aspects of comparison between the marks at issue, nor, as is apparent from the administrative file, was that question discussed before it by the parties. On the contrary, as is apparent from paragraph 32 of the contested decision, the Board of Appeal assessed the likelihood of confusion in the context of a global visual, phonetic and conceptual comparison of the marks at issue.
87 Therefore, since the manner in which the goods in question are marketed was not raised during the proceedings before the Board of Appeal, it is not for the General Court to rule on that matter.
88 It follows that it is in the light of all the relevant elements, as set out, inter alia, in paragraphs 22 to 27 above, that the finding, by the Board of Appeal, that there was no likelihood of confusion between the marks at issue must be assessed.
89 However, it is important to note, in that regard, contrary to what was established by the Board of Appeal, that the marks at issue cannot be held to be entirely dissimilar, or even that the similarities present are entirely outweighed by the differences.
90 On account of a certain visual similarity, classified as medium (see paragraph 70 et seq. above), a phonetic similarity which may, at least in certain cases, prove to be even more pronounced (see paragraph 75 et seq. above), and in the absence of any conceptual meaning to the marks at issue taken as a whole (see paragraphs 58 and 78 above), the General Court holds that the marks at issue, as a whole, are, to some extent, similar.
91 In addition, the Opposition Division considered that the goods at issue were identical, as was recalled in the contested decision, without the Board of Appeal’s taking a final decision in that regard (see paragraph 40 et seq. above). That implies, in accordance with the case-law cited at paragraph 23 of the present judgment, that, if there is to be no likelihood of confusion, the degree of difference between the marks at issue must be high (see, to that effect, judgment of 29 January 2013 in Case T‑283/11 Fon Wireless v OHIM – nfon (nfon), not published in the ECR, paragraph 69).
92 However, in such circumstances, it was for the Board of Appeal, in order to rule on the applicability of Article 8(1)(b) of Regulation No 207/2009 and on the existence of a likelihood of confusion, to assess all the relevant factors in that regard and, in particular, to determine whether the applicant had demonstrated the enhanced distinctive character acquired through use of the earlier mark, or even its renown.
93 It follows that the applicant’s single plea in law must be accepted and the contested decision annulled in its entirety.
Costs
94 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM has been unsuccessful, it must be ordered to pay the applicant’s costs, in accordance with the form of order sought by the applicant. Since the intervener has been unsuccessful, it must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Annuls the decision of the Second Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 5 July 2011 (Case R 1097/2010-2).
2. Orders OHIM to pay its own costs and also those incurred by Aldi GmbH & Co. KG.
3. Orders Dialcos SpA to pay its own costs.
Forwood | Dehousse | Schwarcz |
Delivered in open court in Luxembourg on 25 June 2013 .
[Signatures]