Giove Gas v EUIPO - Primagaz (KALON AL CENTRO DELLA FAMIGLIA) (EU trade mark - Judgment) [2019] EUECJ T-34/18 (14 February 2019)

Judgment I. Background to the dispute On 28 October 2015, the applicant, Giove Gas Srl, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)). Registration as a mark was sought for the following figurative sign: The goods and services in respect of which registration was sought are in Classes 4, 11, 35 and 38 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, as regards Class 11 specifically, to the following description: ‘Regulating and safety accessories for water and gas installations; food and beverage cooking, heating, cooling and treatment equipment; heating, ventilating, and air conditioning and purification equipment (ambient); refrigerating and freezing equipment; burners, boilers and heaters; flues and installations for conveying exhaust gases; lighting and lighting reflectors’. The trade mark application was published in Community Trade Marks Bulletin No 215/2015 of 12 November 2015. On 12 February 2016, the intervener, Compagnie des gaz de pétrole Primagaz, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above. The opposition was based on the earlier EU word mark CALOON designating goods and services in Classes 4, 11, 35, 37, 39, 40 and 42, corresponding, as regards Class 11 specifically, to the following description: ‘Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; air conditioning apparatus and installations; freezers; pocket searchlights; coffee machines, electric; cookers; lighting apparatus for vehicles; heating or air conditioning installations for vehicles; air and water purifying apparatus and machines; sterilisers’. The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001). On 26 April 2017, the Opposition Division upheld the opposition. On 14 June 2017, the applicant filed a notice of appeal with EUIPO under Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001) against the decision of the Opposition Division, in so far as it upheld the opposition in respect of the goods in Class 11. By decision of 27 November 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal. More specifically, it found that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, on the grounds, first, that the goods at issue in Class 11 were identical or highly similar and, secondly, that the marks at issue were similar, inter alia, on account of the fact that, for the German-speaking part of the relevant public, the word elements ‘caloon’, in the earlier mark, and ‘Kalon’, in the mark applied for, are phonetically identical, and the fact that the phrase ‘al centro della famiglia’, in the mark applied for, was likely to be disregarded by that public due to the small size of the characters used. II. Forms of order sought The applicant claims that the Court should: – alter all the provisions of the contested decision; – following rejection of the opposition, order registration of the figurative mark in favour of the applicant for all the classes stated in the original application, particularly Class 11; – obtain all relevant acts and procedural documents relating to the proceedings before the Opposition Division and the Board of Appeal, whilst reserving the right to adopt further measures of inquiry after hearing the parties. EUIPO and the intervener contend that the Court should: – dismiss the action; – order the applicant to pay the costs. III. Law A. The applicant’s third head of claim By its third head of claim, the applicant requests that the Court obtain from EUIPO all ‘relevant’ documents relating to the proceedings before the Opposition Division and the Board of Appeal. However, it should be noted that, in accordance with Article 178(5) of the Rules of Procedure of the General Court, EUIPO forwarded to the Court the file relating to the proceedings before the Board of Appeal, which includes the procedural documents that went before the Opposition Division. Therefore there is no need to adjudicate on the third head of claim. B. The applicant’s first and second heads of claim 1. Preliminary observations The view must be taken that, although the applicant’s first head of claim formally relates to the alteration of the contested decision, it is clear from the content of the application that, by the present action, the applicant seeks, essentially, partial annulment of the contested decision on the ground that the Board of Appeal was wrong to consider that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, in relation to ‘pellet stoves’. The applicant states in the application that ‘the dispute is limited to certain specific goods (pellet stoves) that are included under apparatus for heating’ in Class 11. However, it must be noted that none of the goods designated by the mark applied for correspond to the description ‘pellet stoves’. In those circumstances, as the applicant considers that pellet stoves are included under ‘apparatus for heating’ in Class 11 and the list of goods in that class contained in the EU trade mark application includes ‘heating equipment’, the applicant’s first head of claim must be interpreted as seeking partial annulment of the contested decision in so far as the appeal against the Opposition Division’s decision was dismissed in respect of such heating equipment. 2. The applicant’s single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001 In support of its first and second heads of claim, the applicant relies essentially on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001. EUIPO and the intervener dispute the applicant’s arguments. Under Article 8(1)(b) of Regulation 2017/1001, 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 trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. According to the case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. Pursuant to that same line of case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the marks 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 marks and that of the goods or services covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) , T‑162/01, EU:T:2003:199 , paragraphs 30 to 33 and the case-law cited). When 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 at issue by the consumer of the goods in question in that territory. However, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union (see, to that effect, judgment of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others) , T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397 , paragraph 76 and the case-law cited). (a) 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 goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR) , T‑256/04, EU:T:2007:46 , paragraph 42 and the case-law cited). In the present case, it should be noted that the applicant does not dispute the Board of Appeal’s assessment that the relevant public is that of the European Union, consisting of both the general public and professionals, whose level of attention is deemed to be high as regards the goods at issue in Class 11. However, the applicant essentially criticises the Board of Appeal for examining whether there was a likelihood of confusion only in certain Member States, including Germany and Austria. In that respect, it must be held, in accordance with the case-law cited in paragraph 22 above, that, since the Board of Appeal found that there was a likelihood of confusion with regard to the German-speaking public of the European Union, in particular that of Germany and Austria, it was not necessary for the board to assess whether such a risk exists in other parts of the European Union. (b) The comparison of the goods concerned The Board of Appeal was right to find that ‘apparatus for heating’, as designated by the earlier mark in Class 11, and ‘heating equipment’, as designated by the mark applied for in Class 11, were identical. In that regard, the applicant essentially maintains that it intends to market only pellet stoves under the mark applied for, whereas the intervener does not market such stoves. Accordingly, there can be no likelihood of confusion with regard to pellet stoves. In addition, it states that it sent the intervener a letter proposing to restrict the list of goods and services contained in the application for registration of the EU trade mark ‘solely to “stoves” and systems in which solid combustibles such as pellets were used’ in Class 11. However, first, it must be noted that, as particular marketing strategies for goods or services covered by trade marks can vary over time and are subject to the wishes of the proprietors of those marks, the prospective assessment of the likelihood of confusion between two marks cannot be dependent on the marketing intentions, whether given effect or not, which are by their very nature subjective, of the proprietors of the marks (judgments of 15 March 2007, T. I. M. E. ART v OHIM , C‑171/06 P, not published, EU:C:2007:171 , paragraph 59, and of 9 September 2008, Honda Motor Europe v OHIM — Seat (MAGIC SEAT) , T‑363/06, EU:T:2008:319, paragraph 63). Thus, the use that the applicant intends to make of the mark applied for is irrelevant in that respect. In opposition proceedings, EUIPO may only take account of the list of goods and services in respect of which an application is made as it appears in the trade mark application, subject to any amendments thereto (judgment of 13 April 2005, Gillette v OHIM — Wilkinson Sword (RIGHT GUARD XTREME sport) , T‑286/03, not published, EU:T:2005:126, paragraph 33; see also, to that effect, judgment of 22 March 2007, Saint-Gobain Pam v OHIM — Propamsa (PAM PLUVIAL) , T‑364/05, EU:T:2007:96, paragraph 89). In that regard, as the Board of Appeal cannot be criticised for not taking account of a letter that was addressed only to the intervener, it was right to take account of the list of goods and services in respect of which application was made as it appeared in the trade mark application for the purposes of comparing the goods and services in question, notwithstanding the applicant’s claim that it intended to market only pellet stoves. Secondly, it must be noted that the comparison of the goods and services, as required under Article 8(1)(b) of Regulation 2017/1001, must be based on the description, as it appears in the registration document, of the goods and services designated by the earlier mark relied on in opposition and not the goods and services for which the trade mark is actually used, unless, following a request for proof of genuine use of the earlier mark, in accordance with Article 47(2) of Regulation 2017/1001, such proof is furnished only in respect of part of the goods or services for which the earlier mark is registered (see, to that effect, judgments of 7 September 2006, Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP) , T‑133/05, EU:T:2006:247 , paragraph 30, and of 22 March 2007, PAM PLUVIAL , T‑364/05, EU:T:2007:96, paragraph 85). Therefore, in the absence of such a request for proof of genuine use of the earlier mark, it must be noted that the Board of Appeal was right to take account of the description of the goods and services designated by the earlier mark for the purposes of comparison with the goods and services designated by the mark applied for, notwithstanding the fact, even if it were to be established, that the intervener does not market pellet stoves. (c) The comparison of the marks at issue The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of 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 the 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, OHIM v Shaker , C‑334/05 P, EU:C:2007:333 , paragraph 35 and the case-law cited). 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, 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 (see judgment of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333 , paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker , C‑334/05 P, EU:C:2007:333 , paragraph 42, and of 20 September 2007, Nestlé v OHIM , C‑193/06 P, not published, EU:C:2007:539 , paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM , C‑193/06 P, not published, EU:C:2007:539 , paragraph 43). The Board of Appeal found, first, that the marks at issue had a low degree of visual similarity, secondly, that those marks were phonetically identical for the German-speaking part of the relevant public and, thirdly, that it was not possible to make a conceptual comparison of the marks as the earlier mark was devoid of meaning. The applicant essentially claims, first, that the marks at issue are not visually or conceptually similar and, secondly, that the Board of Appeal overstated the degree of phonetic similarity of those marks. (1) The visual similarity of the marks at issue As regards the visual comparison, it must be pointed out, first, that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have a graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM — Star TV (STAR TV) , T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited). The applicant maintains, however, that the marks at issue are not similar in view of the stylised nature of letters ‘a’ and ‘n’ in the mark applied for and the depiction of a flame on the upper part of the letter ‘a’ and on the lower part of the letter ‘n’. In that regard, it must be noted, as observed by the Board of Appeal, that the word element ‘kalon’ is, on account of its size, the dominant element of the mark applied for. It must also be noted that all the letters of that word element are also present, in the same order, in the earlier mark, the only exception being the first of those letters. In those circumstances, it must be held that the differences identified by the applicant are not sufficient to rule out any similarity between the marks at issue. It follows that the Board of Appeal was correct in finding that the degree of visual similarity between the marks at issue was low. (2) The phonetic similarity of the marks at issue The applicant essentially claims that the Board of Appeal overstated the degree of phonetic similarity of the marks at issue. In that regard, it should be noted, as stated by the Board of Appeal, that the phrase ‘al centro della famiglia’ will probably not be said aloud by the relevant public due, inter alia, to the very small font size used in comparison to that of the word element ‘kalon’. Furthermore, it should be noted that the applicant, first, does not dispute the Board of Appeal’s assessment that the group of letters ‘oo’ in the earlier mark and the letter ‘o’ in the mark applied for will be pronounced identically by the German-speaking part of the relevant public and, secondly, has failed to adduce any evidence or detailed argument in support of the alleged overstatement by the Board of Appeal of the degree of phonetic similarity of the marks at issue. In those circumstances, the applicant has no grounds to challenge the Board of Appeal’s assessment that the marks at issue are phonetically identical. (3) The conceptual similarity of the marks at issue The applicant essentially claims that the marks at issue are not similar on account, first, of the meaning of the Italian phrases ‘una promessa di felicità’, which was used in one of the applicant’s advertising campaigns, and ‘al centro della famiglia’, which is present in the mark applied for, and, secondly, of the word element ‘kalon’ which is also present in the mark applied for and means ‘beauty’ in ancient Greek. In that regard, the Board of Appeal was fully entitled to find that a conceptual comparison of the marks at issue was not possible. First, it is not disputed that the word element ‘caloon’ is devoid of any meaning. Secondly, it should be noted, as observed by the Board of Appeal, that the German-speaking part of the relevant public will not perceive the meaning of the word element ‘kalon’ or the phrases ‘al centro della famiglia’ and ‘una promessa di felicità’, since neither that word element nor the words in those phrases are commonly used in German. Moreover, as regards, more specifically, the phrase ‘una promessa di felicità’, it is not present in either of the marks at issue. Therefore, it cannot, in any event, be taken into consideration for the purposes of assessing the similarity of those marks. (d) The likelihood of confusion The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon , C‑39/97, EU:C:1998:442 , paragraph 17, and of 14 December 2006, VENADO with frame and Others , T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397 , paragraph 74). The Board of Appeal found that there was a likelihood of confusion, despite the high level of attention of the relevant public, due, first, to the fact that the goods in question are identical and, secondly, the fact that the marks at issue are phonetically identical and visually similar. It also stated that such goods were often purchased with assistance from specialised vendors who advise customers orally. Accordingly, there was no justification for attaching greater importance to the visual comparison than the phonetic comparison for the purposes of assessing the likelihood of confusion. The applicant essentially claims, first, that the visual comparison is of greater importance than the phonetic comparison for the purposes of assessing the likelihood of confusion since the relevant public is increasingly making purchases via the internet and, secondly, that the high level of attention of the relevant public is likely to preclude the existence of a likelihood of confusion. However, first, it should be observed that the applicant has failed to adduce any evidence capable of establishing that an increasing portion of the relevant public purchases the goods in question on the internet. Moreover, even assuming that this were established, the applicant does not state what share of those goods are purchased online. Thus, it cannot be inferred that the visual similarity is of greater importance than the phonetic similarity for the purpose of assessing the likelihood of confusion. Secondly, contrary to the view taken by the applicant, it cannot be accepted that there are cases in which, owing to the level of attention displayed by the relevant public, any likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, and therefore any possibility of applying that provision can, a priori, be ruled out (judgment of 13 March 2018, Kiosked v EUIPO — VRT (K) , T‑824/16, EU:T:2018:133 , paragraph 72 and the case-law cited). On the contrary, what is required is an overall assessment of that risk on a case-by-case basis, as is required by the settled case-law cited in paragraph 21 above. In the context of that overall assessment, the level of attention of the relevant public constitutes just one of the factors to be taken into consideration (judgment of 21 November 2013, Equinix (Germany) v OHIM — Acotel (ancotel.) , T‑443/12, not published, EU:T:2013:605, paragraph 53). Moreover, it must be noted that, as rightly observed by EUIPO, having regard to the fact that the goods in question are identical and the circumstances in which they are marketed, as identified by the Board of Appeal, the phonetic identity and the low degree of visual similarity of the marks at issue serve to establish that there is a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, notwithstanding the high level of attention of the relevant public. That finding is not called into question by the applicant’s arguments. In the first place, the applicant’s arguments based on a provision of the Italian Civil Code relating to acts of unfair competition that may give rise to a likelihood of confusion and on the reference, without further clarification, to the case-law of Italian courts relating to that provision are not capable of calling into question the assessment of the likelihood of confusion, within the meaning of Article 8(1) of Regulation 2017/1001, carried out by the Board of Appeal. It must be borne in mind that the EU trade mark system is an autonomous system, with its own set of objectives and rules peculiar to it, that applies independently of any national system (judgment of 6 September 2018, Bundesverband Souvenir — Geschenke — Ehrenpreise v EUIPO , C‑488/16 P, EU:C:2018:673 , paragraph 72 and the case-law cited). In the second place, the applicant relies on paragraphs 40 and 43 of the judgment of 14 November 2013, Environmental Manufacturing v OHIM (C‑383/12 P, EU:C:2013:741 ), relating to the standard of proof required to find detriment or the risk of detriment to the distinctive character of an earlier trade mark with a reputation under Article 8(5) of Regulation 2017/1001. It is sufficient to point out that the Board of Appeal is not required to find detriment or the risk of detriment to the distinctive character of the earlier mark in order to conclude that there is a likelihood of confusion within the meaning of Article 8(1) of that Regulation. In the third place, the reference in the contested decision to paragraph 48 of the judgment of 16 July 2014, Endoceutics v OHIM — Merck (FEMIVIA) (T‑324/13, not published, EU:T:2014:672 ), according to which, even where the relevant public has a high level of attention, the consumer must rely on his imperfect recollection of the marks at issue, does not contradict the Board of Appeal’s finding in the present case that there is a likelihood of confusion between the marks at issue. In view of the similarity between those marks, and particularly their phonetic identity, the fact that the relevant public will retain only an imperfect recollection of them is such as to increase that likelihood of confusion. In the fourth place, the applicant claims that the Board of Appeal based its decision on ‘a purely linguistic analysis contrary to the general principles of free competition that have been repeatedly proclaimed and enshrined at Community level’. However, the applicant does not specify which ‘purely linguistic analysis’ and which ‘general principles of free competition’ it is referring to and does not explain how that analysis led the Board of Appeal to interpret Article 8(1)(b) of Regulation 2017/1001 in a manner contrary to those principles. In the fifth place, the applicant has not adduced any evidence capable of establishing ‘misuse of powers’ or ‘distortion of the facts’ by the Board of Appeal in applying Article 8(1)(b) of Regulation 2017/001. Thus, it follows from the foregoing that the single plea in law put forward by the applicant must be rejected as unfounded and the action must be dismissed in its entirety, without it being necessary to rule on the admissibility of the applicant’s second head of claim. Costs Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs incurred by EUIPO and by the intervener, in accordance with the forms of order sought by those parties. On those grounds, THE GENERAL COURT (Ninth Chamber) hereby: 1. Dismisses the action; 2. Orders Giove Gas Srl to pay the costs. Gervasoni Kowalik-Bańczyk Mac Eochaidh Delivered in open court in Luxembourg on 14 February 2019. E. Coulon S. Gervasoni Registrar President * 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