JUDGMENT OF THE COURT OF FIRST INSTANCE (Second Chamber)

20 October 2009 (*)

(Community trade mark – Opposition proceedings – Application for figurative Community mark 4 OUT Living – Earlier national figurative mark Living & Co – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))

In Case T‑307/08,

Aldi Einkauf GmbH & Co. OHG, established in Essen (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 R. Manea and G. Schneider, acting as Agents,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM being

Goya Importaciones y Distribuciones, SL, established in Cuarte de Huerva (Spain),

ACTION brought against the decision of the First Board of Appeal of OHIM of 7 May 2008 (Case R 1199/2007‑1), concerning opposition proceedings between Goya Importaciones y Distribuciones, SL, and Aldi Einkauf GmbH & Co. OHG,

THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Second Chamber),

composed of I. Pelikánová (Rapporteur), President, K. Jürimäe and S. Soldevila Fragoso, Judges,

Registrar: N. Rosner, Administrator,

having regard to the application lodged at the Registry of the Court on 7 August 2008,

having regard to the response lodged at the Registry of the Court on 2 December 2008,

further to the hearing on 12 May 2009,

gives the following

Judgment

 Background to the dispute

1        On 27 December 2004, the applicant, Aldi Einkauf GmbH & Co. OHG, filed a Community trade mark application at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to 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)). The application concerned the registration of the figurative mark reproduced below:

2        The goods in respect of which registration was sought are in Classes 18, 25 and 28 under the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the purposes of Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:

–        Class 18: ‘leather and imitations of leather, and goods made of these materials (included in class 18); animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’;

–        Class 25: ‘Clothing, footwear, headgear’;

–        Class 28: ‘Games and playthings; gymnastic and sporting articles (included in class 28); decorations for Christmas trees’.

3        The application was published in Community Trade Marks Bulletin No 30/2005 of 25 July 2005.

4        On 21 October 2005, Goya Importaciones y Distribuciones, SL, filed a notice of opposition against registration of the trade mark applied for on the basis of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009). The opposition was directed against all of the goods in respect of which registration had been applied for.

5        The opposition was based on the following earlier Spanish figurative mark:

6        The application for the earlier mark had been filed on 5 July 2004 and the mark was registered on 3 January 2005 under No 2604969 for goods in Classes 3, 14, 16, 18, 21, 25, 34 and 35.

7        The goods covered by the earlier mark included, with regard to Classes 18 and 25, goods corresponding to the following description:

–        Class 18: ‘leather and imitations of leather, and goods made of these materials not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’;

–        Class 25: ‘General clothing, footwear, T-shirts, pullovers, trainers’.

8        By decision of 24 July 2007, the Opposition Division granted the opposition in part, that is to say, for all of the goods in Classes 18 and 25. It found that there was a likelihood of confusion between the marks by reason of a vague similarity at the visual and aural levels, inasmuch as the character font used for the common component ‘Living’ was practically identical, and because the goods were identical in relation to the abovementioned classes.

9        On 31 July 2007, the applicant brought an appeal against that decision. It took the view that the Opposition Division had failed to take account of the earlier mark’s low level of distinctive character, or of the fact that the two marks differed clearly enough at the visual and aural levels for any confusion to be avoided.

10      By decision of 7 May 2008 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal. It found, in essence, that, in the case before it, the visual component was very significant and that the identity of the goods and the common component ‘Living’, with a practically identical character font, cancelled out the differences between the two marks. From this the Board of Appeal concluded that, although there were differences between them, the marks were, on the whole, similar and that there was a likelihood of confusion for the relevant Spanish public in relation to all of the goods in Classes 18 and 25.

 Forms of order sought

11      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

12      OHIM contends that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

13      The applicant raises one single plea in law alleging infringement of Article 8(1)(b) of Regulation No 40/94 on the ground that the Board of Appeal erred in finding that there was a likelihood of confusion between the marks at issue.

 Arguments of the parties

14      In support of its single plea, the applicant puts forward, essentially, five arguments. First, it submits that the visual components ‘OUT’ and ‘4’ of the mark applied for, and the visual component ‘&’ of the earlier mark, were ignored by the Board of Appeal, even though they are important elements which determine the distinctive character of the two marks. Second, it contends that the similarity between the ‘Living’ word components of the two marks does not suffice to establish a likelihood of confusion, given that that component has a low level of distinctive character in the earlier mark. Third, as the Board of Appeal noted, the ‘OUT’ and ‘4’ components are of great significance for the impression created by the trade mark applied for, such that the ‘Living’ component is of lesser significance. Fourth, the basis on which the two opposing marks are created is different, in that the ‘Living’ component of the trade mark applied for is located at the end of the sign, whereas that component constitutes the beginning of the earlier mark. Fifth, the applicant takes the view that the differences between the two marks from the visual, aural and conceptual points of view will be all the more noticeable to the relevant public, since consumers are more attentive and informed with regard to goods in Classes 18 and 25, which are often fashion items.

15      OHIM contests the applicant’s arguments.

 Findings of the Court

16      According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. According to that same line of case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and goods or services in question, and taking account of all factors relevant to the circumstances of the case, in particular the interdependence between the similarity between the trade marks and between the goods or services indicated (see Case T‑162/01 Laboratorios RTB v OHIMGiorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).

17      For the purposes of that global assessment, the average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. Account should, however, be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept 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, by way of analogy, Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 26).

18      In the present case, the earlier mark is a Spanish national mark and the application at issue concerns a Community mark. Consequently, the relevant territory for purposes of assessing the likelihood of confusion is the whole territory of Spain.

 The relevant public

19      In this case, in view of the fact that the goods concerned are in classes 18 and 25, the relevant public should be taken to be the average, reasonably well-informed and reasonably observant and circumspect Spanish consumer.

20      In that context, the applicant’s fifth argument, to the effect that consumers are more observant and circumspect with regard to goods in classes 18 and 25, must be rejected.

21      As OHIM rightly points out, the goods concerned in classes 18 and 25 are mass consumption goods, frequently purchased and used by the average Spanish consumer. The degree of attention paid to these goods is no higher than average since the goods in question are not costly or rare, their acquisition and use do not require specific knowledge and they do not have a serious impact on the health, budget or life of Spanish consumers.

 Similarity of the goods

22      With regard to the goods in issue, it should be borne in mind that the present dispute concerns only goods in classes 18 and 25. As is apparent from paragraphs 2 and 7 above, those goods are identical or highly similar for the two marks, a fact which, moreover, the parties have not disputed.

 Comparison of the signs

23      It is clear from settled case-law that the global assessment of the likelihood of confusion, as far as concerns 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, inter alia, their distinctive and dominant components (see Case T‑292/01 Phillips-Van Heusen v OHIMPash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II‑4335, paragraph 47 and the case-law cited).

24      In addition, the global assessment of the likelihood of confusion, for the purposes of applying Article 8(1)(b) of Regulation No 40/94, implies a certain interdependence between the factors taken into account, which presupposes both that the opposing marks are identical or similar and that the goods or services designated by those marks are identical or similar. Those conditions are cumulative (Case C‑234/06 P Il Ponte Finanziaria v OHIM [2007] ECR I‑7333, paragraph 48).

25      In the present case, as has just been stated, the goods concerned are identical or highly similar. Accordingly, a low level of similarity between the opposing signs would suffice for a finding that there is a risk of confusion.

–       The visual similarity of the opposing signs

26      As is clear from paragraphs 23 and 24 of the contested decision, the Board of Appeal took the view that the ‘Living’ element of the mark applied for, despite the fact that it is written in a smaller font, is nevertheless the dominant element of that mark, this being the only text element that is perfectly readable. As the ‘OUT’ element is combined with the star contained in the letter ‘O’ and the ‘4’ element appears more in the background, those elements are less clearly perceptible. As the ‘Living’ element common to the two marks is, moreover, written in the two marks in stylised fonts which are almost identical, the Board of Appeal found a certain visual similarity between the opposing marks.

27      That assessment does not appear to be challengeable and, in particular, it cannot be called into question by the applicant’s first and third arguments.

28      Concerning those arguments, according to which the visual elements ‘OUT’ and ‘4’ of the mark applied for and the ‘&’ element of the earlier mark were ignored by the Board of Appeal, despite being important elements determining the distinctive character of the two marks, it follows from paragraphs 23 to 26 of the contested decision that those elements were indeed taken into account by the Board of Appeal, even though it did not reach the same conclusion as the applicant with regard to their dominant character within the mark applied for.

–       The phonetic similarity of the opposing signs

29      The common element ‘Living’ will be pronounced in all the manners of pronunciation of the opposing marks concerned which are foreseeable on the part of Spanish consumers. Thus, as the Board of Appeal found in paragraph 25 of the contested decision, even if the other elements of the mark applied for were also pronounced, that would not suffice for a finding that there is no similarity between the marks.

–       The conceptual similarity of the opposing signs

30      The Spanish consumer would certainly recognise the number ‘4’ in the mark applied for, as well as the ‘&’ element of the earlier mark. As for the word ‘Living’, which is a very basic word in English, it must be anticipated that the younger generations in Spain would understand that word and, by virtue of that common element, see a clear conceptual link between the two marks, as the Board of Appeal correctly found in paragraph 26 of the contested decision.

31      In those circumstances, it must be held that the marks concerned, assessed globally, are similar. In comparison with the other elements in the two marks, the ‘Living’ element is dominant and not negligible, as the applicant claims. Consequently, no criticism can be levelled at the Board of Appeal’s finding that the marks concerned, despite containing differences, are, on the whole, similar by virtue of the common element ‘Living’ and that the goods are identical.

 The likelihood of confusion

32      In paragraphs 30 to 36 of the contested decision, the Board of Appeal found, essentially and correctly, that the identity of the goods in classes 18 and 25 covered by the opposing marks counterbalanced the differences between those marks, with the result that there was a likelihood of confusion for all of the goods in those classes.

33      In view of the normal level of vigilance and attention required on the part of the relevant public, the signs concerned give rise to general impressions which are sufficiently similar to be liable to give rise to a likelihood of confusion or association in the minds of that public, in particular in view of the fact that the goods in classes 18 and 25 are identical or extremely similar.

34      That assessment cannot be brought into question by the applicant’s arguments.

35      With regard to the second argument, to the effect that the similarity of the word element ‘Living’ common to both marks is insufficient to established a likelihood of confusion, given that that element has only a weak distinctive character in the earlier mark, the Board of Appeal explained in paragraphs 30 and 31 of the contested decision that, although the distinctiveness of the ‘Living’ element cannot be considered high, it must still be considered as a distinctive feature in view of the great importance of the visual element in the opposing marks in relation to goods in classes 18 and 25, which are in principle purchased after a visual inspection. That position is confirmed by the case-law, according to which the finding of a weak distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (see, by analogy, Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 24), it is only one factor among others in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (Case T‑134/06 Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM) [2007] ECR II‑5213, paragraph 70; see also, to that effect, Case T‑112/03 L’Oréal v OHIM – Revlon (FLEXI AIR) [2005] ECR II‑949, paragraph 61).

36      In addition, the approach taken by the applicant in that respect would have the effect of disregarding the factor of the similarity of the marks in favour of one based on the distinctive character of the earlier national mark, which would then be given undue importance. The result would be that, where the earlier national mark is only of weak distinctive character, a likelihood of confusion would exist only where there was a complete reproduction of that mark by the mark applied for, whatever the degree of similarity between the marks in question. Such a result would not, however, be consistent with the very nature of the global appreciation which the competent authorities are required to undertake by virtue of Article 8(1)(b) of Regulation No 40/94 (see PAGESJAUNES.COM, paragraph 71 and the case-law cited).

37      Accordingly, the applicant’s second argument must be rejected.

38      With regard to the applicant’s fourth argument, according to which the way in which the opposing marks are formed is different, as the ‘Living’ element constitutes the beginning of the earlier mark, whereas it is at the end of the mark applied for, that circumstance is not such as to bring into question the similarity between the marks concerned or the likelihood of confusion existing between them. The different positions of the ‘Living’ element do not in any way affect the dominant character that that element has for the marks concerned. The Board of Appeal was thus right to conclude that, even if the degree of similarity created by the common element ‘Living’ is weakened by other elements, the similarity is not neutralised in the present case.

39      It is thus necessary to reject the applicant’s fourth argument.

40      In the light of all of the foregoing, it must be held that the Board of Appeal did not err in law in finding that there was a likelihood of confusion between the mark applied for and the earlier mark. The applicant’s single plea must, therefore, be rejected and the action accordingly dismissed.

 Costs

41      Under Article 87(2) of the Rules of Procedure of the Court of First Instance, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.

On those grounds,

THE COURT OF FIRST INSTANCE (Second Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Aldi Einkauf GmbH & Co. OHG to pay the costs.

Pelikánová

Jürimäe

Soldevila Fragoso

Delivered in open court in Luxembourg on 20 October 2009.

[Signatures]