dm-drogerie markt v OHMI - Disenos Mireia (M) (Judgment) [2015] EUECJ T-662/13 (25 June 2015)

Judgment Background to the dispute On 15 February 2011, Diseños Mireia, SL 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). Registration as a mark was sought for the following figurative sign: The goods in respect of which registration was sought are in Class 14 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: ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, costume jewellery, precious stones; horological and chronomatic instruments’. The Community trade mark application was published in Community Trade Marks Bulletin No 41/2011 of 1 March 2011. On 17 May 2011, the applicant, dm-drogerie markt GmbH & Co. KG, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of the goods referred to in paragraph 3 above. The opposition was based on the earlier Community word mark dm, filed on 13 August 2004 and registered on 22 January 2009 under the number 3984044, designating, inter alia, goods in Class 14 corresponding to the following description: ‘Jewellery, horological instruments; key fobs’. The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009. On 23 April 2012, the Opposition Division rejected the opposition in its entirety. On 9 May 2012, 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. By decision of 11 September 2013 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal. It found, in essence, that the goods covered by the marks at issue were in part identical, in part similar and in part dissimilar, that the mark applied for would most probably be perceived as representing a highly stylised capital letter ‘M’ whereas the earlier mark consisted of the combination of the letters ‘d’ and ‘m’ without any stylisation, and that there were no visual, phonetic and conceptual similarities between the marks at issue. It concluded that, in the light of the absence of any similarity between the marks at issue, there could be no likelihood of confusion between them within the meaning of Article 8(1)(b) of Regulation No 207/2009, without it being necessary to rule on the enhanced distinctive character of the earlier mark. Forms of order sought The applicant claims that the Court should: – annul the contested decision and, ‘by the way of correction’, annul the mark applied for; – in the alternative, annul the contested decision and remit the case to OHIM; – in the further alternative, annul the contested decision. OHIM contends that the Court should: – dismiss the action; – order the applicant to pay the costs. Law The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. It claims, in essence, that contrary to the findings of the Board of Appeal, the marks at issue both consist of the letters ‘d’ and ‘m’ and are therefore phonetically and visually similar. The applicant submits that, consequently, taking into account also the identity or similarity of some of the goods in question and the enhanced distinctiveness of the earlier mark, the Board of Appeal erred in finding that there was no likelihood of confusion between those marks. 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 must not be registered if because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services 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). 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 judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel) , T‑316/07, ECR, EU:T:2009:14 , paragraph 42 and the case-law cited). Consequently, for the purposes of applying that provision, it is still necessary, even where the two marks are identical, to adduce evidence of similarity between the goods or services covered by them (see, to that effect, order of 9 March 2007 in Alecansan v OHIM , C‑196/06 P, EU:C:2007:159, paragraph 24, and judgment of 11 July 2007 in Mülhens v OHIM — Minoronzoni (TOSCA BLU) , T‑150/04, ECR, EU:T:2007:214, paragraph 27). It is in the light of those principles that the present plea in law must be examined. The relevant public According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR) , T‑256/04, ECR, EU:T:2007:46 , paragraph 42 and the case-law cited). In paragraph 12 of the contested decision, the Board of Appeal found that the relevant territory was that of the European Union. That assessment, which is not, moreover, disputed by the parties, must be endorsed, as the earlier mark on which the contested decision is based is a Community trade mark. In paragraph 14 of the contested decision, the Board of Appeal stated that the goods in question were aimed both at professionals, such as artisan jewellers, jewellery retailers, clothing designers and clothing retailers, and at the general public. In the light of the nature of those goods, that definition of the relevant public, which is not, moreover, disputed by the parties, must be confirmed. As regards the relevant public’s level of attention, it is also necessary to confirm the Board of Appeal’s assessment, which is in paragraphs 14 and 15 of the contested decision and is not disputed by the parties, that that level of attention is either rather high, in the light, in particular, of the fact that the goods in question tend generally to be expensive (see, to that effect, judgment of 12 January 2006 in Devinlec v OHIM — TIME ART (QUANTUM) , T‑147/03, ECR, EU:T:2006:10, paragraph 63), or, where those goods are ‘produced and sold in rather cheap variations’, average, since such goods are purchased to embellish the appearance of the human body. The comparison of the goods In paragraphs 16 to 20 of the contested decision, the Board of Appeal found that the goods in question were in part identical, in part similar and in part different. Accordingly, it found that: – the goods described as ‘jewellery, costume jewellery’ and ‘goods in precious metals or coated therewith, not included in other classes’ covered by the mark applied for were identical to those described as ‘jewellery’ covered by the earlier mark; – the goods described as ‘horological and chronometric instruments’ covered by the mark applied for were identical to those described as ‘horological instruments’ covered by the earlier mark; – the goods described as ‘precious stones’ covered by the mark applied for and those described as ‘jewellery’ covered by the earlier mark were similar; – the goods described as ‘precious metals and their alloys, not included in other classes’ covered by the mark applied for were dissimilar to the goods covered by the earlier mark. Those assessments by the Board of Appeal must be confirmed for the reasons set out in paragraphs 16 to 20 of the contested decision. Moreover, it must be pointed out that the applicant expressly agrees with them, as regards the identity and the similarity of the goods, and does not dispute them, as regards the dissimilarity between the goods. Since the goods described as ‘precious metals and their alloys, not included in other classes’ covered by the mark applied for are dissimilar to the goods covered by the earlier mark, it is necessary at the outset, in the light of principles referred to in paragraph 16 above, to uphold the contested decision in so far as it dismisses the appeal against the Opposition Division’s decision as regards those goods. It must be stated that, in the application, the applicant does not, however, include those goods among those in respect of which the Community trade mark application should, in its view, be rejected. The comparison of the signs The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, 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 this 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). According to the case-law, two marks are similar where, 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 (see judgment of 17 February 2011 in Annco v OHIM — Freche et fils (ANN TAYLOR LOFT) , T‑385/09, ECR, EU:T:2011:49, paragraph 26 and the case-law cited). In paragraph 22 of the contested decision, the Board of Appeal found that the earlier mark dm was a word mark made up of two consonants. In paragraph 23 of the contested decision, the Board of Appeal described the mark applied for as follows: ‘The figurative mark … applied for is highly stylised. It consists of two outer thick stems, terminating at both ends with serifs. Both stems are connected by vertical strokes that are arched from the top end of the stems to the middle where they meet and then continue in a joint line to the bottom left side, ending in a pointed end. On top of the central joint, there are three relatively small inclined lines that might be perceived as a crawl or wedges or other decorative element and which are placed in such a way to represent a shine or shimmer. Ornamental leaves or garlands starting from the pointed end of the left bow to the centre could call to mind a floral element.’ In paragraph 24 of the contested decision, the Board of Appeal added the following: ‘The two outer thick stems and the mirrored connection in the centre between the two stems correspond to the typical elements of a capital letter “M” where the inward strokes may meet in the centre on the x-height like in “M” or they meet on the base line like in “M”. It is, therefore, most probable that the device will be recognised as being a highly stylized letter “M”. The fact that the central strokes descend in a trunk-like bow beyond the base line to the left would be seen, in the Board’s view, as a simple variation of the letter “M”.’ In paragraph 25 of the contested decision, the Board of Appeal concluded the following: ‘Considering that the signs are short, the trade mark applied for “M” being highly stylized, and the earlier trade mark consisting of the letter combination “d[” and “]m” without any stylisation, the differences in the aural, visual and conceptual comparisons are important as they create a dissimilar impression overall.’ It is apparent from the contested decision that the Board of Appeal based its conclusion that the marks at issue were dissimilar primarily on the premiss that the mark applied for will most probably be perceived as a stylised representation of the capital letter ‘M’ and not as a stylised representation of the capital letters ‘D’ and ‘M’ combined. In the alternative, it took the view that its conclusion would be identical in the latter case. It must be stated that none of the arguments put forward by the applicant allows for the inference that that premiss is incorrect. In that regard, in the first place, it must be pointed out that the parties agree on the fact that the mark applied for may be perceived as at least including a stylised representation of the capital letter ‘M’. That view must endorsed in the light of the findings made by the Board of Appeal in paragraphs 23 and 24 of the contested decision (see paragraphs 29 and 30 above). The fundamental question which arises is therefore that of whether the relevant public might see a representation of the capital letter ‘D’ in addition to a representation of the capital letter ‘M’ in the mark applied for or, in other words, perceive that mark as a stylised representation of the capital letters ‘D’ and ‘M’, in which the first of those letters is interlinked with the second. That question calls for a negative answer. As the Board of Appeal rightly found in paragraph 34 of the contested decision, the line which extends the upper serif of the left vertical line of the mark applied for towards the centre of that mark, curves markedly towards the left, crosses the baseline, turns back towards that vertical line and ends placed under the lower serif thereof will not be perceived by the relevant public as also having the function of forming the bowl of the capital letter ‘D’. In that regard, it must be pointed out, first, that, as was stated correctly in paragraph 35 of the contested decision, there is normally no opening at the bottom of the capital letter ‘D’ as the bowl of that letter is completely attached to the vertical line in the letter. In the present case, there is a space between the lower serif of the left vertical line of the mark applied for and the end of the curved line. Secondly, as the Board of Appeal correctly found in paragraph 36 of the contested decision, the overall impression created by the mark applied for is dominated by ‘the mirrored side stems of the letter “M”’. In the second place, the applicant cannot claim that the mark applied for will be perceived by the relevant public as consisting of the letters ‘d’ and ‘m’ on the ground that those letters represent the initials of the trade name ‘Diseños Mireia’. That claim is based primarily on the premiss that the relevant public will associate that mark directly with that trade name. However, as OHIM very rightly points out, the applicant does not in any way substantiate that premiss, in particular by showing that that mark and that trade name are widely known. In the third place, the applicant cannot, moreover, argue that Diseños Mireia uses the mark applied for together with a reference to its trade name. It is settled case-law that the comparison must be made between the signs as they were registered or as they appear in the application for registration, regardless of whether they are used alone or together with other marks or particulars (judgment of 8 December 2005 in Castellblanch v OHIM — Champagne Roederer (CRISTAL CASTELLBLANCH) , T‑29/04, ECR, EU:T:2005:438, paragraph 57). It follows from the foregoing that the Board of Appeal was right to find that the mark applied for will most probably be perceived by the relevant public as constituting a stylised representation of the capital letter ‘M’ on its own. As OHIM correctly points out, the arguments put forward by the applicant in its written pleadings are based exclusively on the premiss that the mark applied for will be perceived as consisting of the capital letters ‘D’ and ‘M’. In the application, the applicant even concedes that, ‘in case every consumer or at least most of the consumers would perceive the trademark [applied for] as being just the letter “M” in a stylized version that the signs “DM” and “M” are dissimilar would be acceptable’. It must therefore be held that the applicant has not established that the Board of Appeal erred in finding that the marks at issue were dissimilar overall. For the sake of completeness, that assessment of the Board of Appeal must be confirmed. Accordingly, in the first place, as regards the visual comparison, it must be borne in mind that, in accordance with the case-law, 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 (judgment of 15 November 2007 in Sunplus Technology v OHIM — Sun Microsystems (SUNPLUS) , T‑38/04, EU:T:2007:341, paragraph 36). In the present case, the earlier mark is a word mark consisting of the letters ‘d’ and ‘m’ written in printed characters in a normal font, with no specific graphic element. The mark applied for is a figurative mark containing a highly stylised representation of the capital letter ‘M’ as well as certain ornamental motifs, in the present case three small triangles arranged in the form of rays, placed above the point at which the oblique lines which extend the serifs above the vertical lines meet and fine garlands which start from the pointed end of the single curved line. The very specific graphic form of the contested mark has the effect of counteracting to a large extent the point of similarity relating to the fact that that mark may be understood as a reference to the letter ‘m’ written as a capital letter, which is one of the two letters of which the earlier mark consists. In the light of those factors, it must be held that the Board of Appeal was right to find, in paragraphs 25 and 43 of the contested decision, that, on the basis of the overall impression created by them, the marks at issue were visually dissimilar. In the second place, as regards the phonetic comparison, it must be held that the Board of Appeal was also right to find, in paragraph 26 of the contested decision, that, although it was true that the relevant public might perceive the mark applied for as containing a representation of the capital letter ‘M’, it was, however, unlikely that it would attempt to pronounce that mark. On account of the very specific graphic form of that mark, that public will tend to describe it and not to pronounce it (see, to that effect, judgment of 22 September 2011 in ara v OHIM — Allrounder (A with two triangular motifs) , T‑174/10, EU:T:2011:519, paragraph 32). Consequently, the Board of Appeal was justified in finding that the marks at issue were also dissimilar phonetically. In the third place, it must be held that, as was rightly stated in paragraph 27 of the contested decision, a statement which is not, moreover, disputed by the parties, the marks at issue cannot be compared from a conceptual standpoint as they have no meaning. In the light of the foregoing, the Board of Appeal’s finding, in paragraph 28 of the contested decision, that the marks at issue are dissimilar must be upheld. The distinctive character of the earlier mark It must be borne in mind that the more distinctive the earlier mark, the greater the likelihood of confusion. Thus marks with a highly distinctive character, either inherently or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character. The distinctive character of the earlier trade mark must therefore be taken into account when assessing whether a likelihood of confusion exists (see judgments of 17 April 2008 in Ferrero Deutschland v OHIM , C‑108/07 P, EU:C:2008:234, paragraphs 32 and 33 and the case-law cited, and 28 October 2010 in Farmeco v OHIM — Allergan (BOTUMAX) , T‑131/09, EU:T:2010:458, paragraph 67 and the case-law cited). In paragraph 29 of the contested decision, the Board of Appeal stated that there was no need to examine the applicant’s argument relating to the alleged enhanced distinctive character of the earlier mark because the marks at issue were dissimilar, which was sufficient to preclude the application of Article 8(1)(b) of Regulation No 207/2009. The applicant submits that the earlier mark has a significant reputation, in particular in Germany, and complains that the Board of Appeal did not, for reasons of procedural economy, take that factor into account in its assessment of the likelihood of confusion. OHIM contends that the applicant has not proved that the earlier mark has enhanced distinctive character as regards the goods in Class 14 covered by that mark. First of all, the applicant’s claim that the Board of Appeal was required to take the alleged well-known nature of the earlier mark into account must be rejected. Having found that there was no similarity between the marks at issue, the Board of Appeal could rightly conclude that there was no likelihood of confusion, irrespective of the alleged enhanced distinctive character of the earlier mark (see, to that effect, judgment of 25 June 2008 in Otto v OHIM — L’Altra Moda (l’Altra Moda) , T‑224/06, EU:T:2008:221, paragraph 50 and the case-law cited). Next, as OHIM rightly states, it must be pointed out that the evidence which the applicant provided with a view to proving the reputation of the earlier mark does not relate to the goods in respect of which that mark was registered and on which the present case is based, namely ‘jewellery, horological instruments; key fobs’, but exclusively to retail services in respect of ‘drugstore’ goods in general. It must be added that, in its written pleadings, the applicant, moreover, refers to the goods covered by the earlier mark only in the context of its claim that, first, ‘every “normal drugstore” offers “fashion jewellery” of class 14’ and, secondly, the reputation that it has in Germany ‘also affects the registered goods of the opposing mark in class 14’. However, that claim, in addition to the fact that it is in no way substantiated by any evidence whatsoever, is clearly unfounded, since it cannot be deduced merely from the fact that a mark has a certain reputation in respect of retail services that that reputation extends automatically to all goods sold under that mark. In that context, it must be pointed out that goods sold in ‘drugstores’ are particularly numerous and very diverse. In the absence of sufficient evidence of the enhanced distinctive character of the earlier mark as a result of the use which has been made of it in respect of the relevant goods which it protects, the distinctive character of that mark is based solely on its inherent distinctiveness. In the present case, the inherent distinctive character of the earlier mark must be considered to be normal, given, in particular, that that mark is neither descriptive nor evocative as regards the relevant goods. The likelihood of confusion 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 (judgments of 29 September 1998 in Canon , C‑39/97, ECR, EU:C:1998:442 , paragraph 17, and 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). It is apparent from paragraphs 29 and 31 of the contested decision that the Board of Appeal found in essence that, as the marks at issue were dissimilar, any likelihood of confusion between them had automatically to be excluded. The applicant submits that, in the light of the identity or similarity of the goods at issue, the enhanced distinctive character of the earlier mark, the visual similarity of the marks at issue and the phonetic identity of those marks, the Board of Appeal should have found that there was a likelihood of confusion between them. Since the marks at issue are dissimilar (see paragraphs 44 to 49 above), it must be held that one of the necessary conditions for the application of Article 8(1)(b) of Regulation No 207/2009 has not been satisfied. Consequently, there cannot be held to be any likelihood of confusion in the present case, regardless of the degree of distinctive character of the earlier mark and regardless of the identity or similarity of the goods at issue (see, to that effect, order of 14 March 2011 in Ravensburger v OHIM , C‑370/10 P, EU:C:2011:149, paragraph 51 and the case-law cited). That finding is reinforced by the fact that the relevant public displays a level of attention which is at least average (see paragraph 21 above). Consequently, the applicant’s single plea in law must be rejected as unfounded and the action therefore dismissed in its entirety, without there being any need to rule on the admissibility, which has been disputed by OHIM, of the heads of claim in the application seeking the annulment of the mark applied for and the referral of the case back to OHIM. Costs Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by OHIM, in accordance with the form of order sought by the latter. On those grounds, THE GENERAL COURT (Sixth Chamber) hereby: 1. Dismisses the action; 2. Orders dm-drogerie markt GmbH & Co. KG to pay the costs. Frimodt Nielsen Dehousse Collins Delivered in open court in Luxembourg on 25 June 2015. [Signatures] * Language of the case: English. © European Union The source of this judgment is the Europa web site. The information on this site is subject to a information found here: Important legal notice . This electronic version is not authentic and is subject to amendment. BAILII: Copyright Policy | Disclaimers | Privacy Policy | Feedback | Donate to BAILII