JUDGMENT OF THE GENERAL COURT (Eighth Chamber)

26 February 2015 (*)

(Community trade mark — Opposition proceedings — Application for the Community word mark SAMSARA — Earlier Community word mark SAMSARA — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑388/13,

Costa Crociere SpA, established in Genoa (Italy), represented by A. Vanzetti, S. Bergia and G. Sironi, lawyers,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by L. Rampini, acting as Agent,

defendant,

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being

Guerlain SA, established in Levallois-Perret Cedex (France), represented by C. Costa and M. Baccarelli, lawyers,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 13 May 2013 (Case R 2049/2011-4), relating to opposition proceedings between Guerlain SA and Costa Crociere SpA,

THE GENERAL COURT (Eighth Chamber),

composed of D. Gratsias, President, M. Kancheva and C. Wetter (Rapporteur), Judges,

Registrar: S. Bukšek Tomac, Administrator,

having regard to the application lodged at the Court Registry on 22 July 2013,

having regard to the response of OHIM lodged at the Court Registry on 8 November 2013,

having regard to the response of the intervener lodged at the Court Registry on 7 November 2013,

further to the hearing on 6 November 2014,

gives the following

Judgment

 Background to the dispute

1        On 24 March 2010, the applicant, Costa Crociere SpA, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2        Registration as a mark was sought for the word sign SAMSARA.

3        The services in respect of which registration was sought are in Class 44 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, for that class, to the following description: ‘Spas, Turkish baths, sauna services, health spa services, all provided on board cruise ships’.

4        On 3 September 2010, the intervener, Guerlain SA, filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, against registration of the mark applied for in respect of the services referred to in paragraph 3 above.

5        The opposition was based on the earlier Community word mark SAMSARA designating goods in Class 3 corresponding to the following description: ‘Soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices’.

6        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009.

7        On 12 August 2011, the Opposition Division upheld the opposition in its entirety because of a likelihood of confusion and ordered the applicant to pay the costs of the proceedings.

8        On 3 October 2011, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

9        By decision of 13 May 2013 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. It found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. With respect to the relevant public, it found that it consisted of average consumers within the European Union whose level of attention is average. Next, it found that the goods in Class 3 and the services in Class 44 at issue were similar to an average degree and that the signs were identical and that, consequently, there was a likelihood of confusion in respect of all of the services at issue, including those which the applicant sought to maintain in its alternative claim, which was restricted to sauna and Turkish bath services. Accordingly, the Board of Appeal found that it was not necessary to deal with the question whether the earlier trade mark enjoyed enhanced distinctiveness through use. Lastly, as the applicant had not submitted any evidence concerning peaceful co-existence on the market, the Board of Appeal also dismissed that claim.

 Forms of order sought

10      The applicant claims that the Court should:

–        annul the contested decision;

–        reject the intervener’s opposition and, consequently, allow the application for registration;

–        in the alternative, at least allow the application restricted to ‘sauna’ and ‘Turkish bath’ services;

–        order OHIM to pay the costs, including the costs relating to the previous proceedings before the Opposition Division and the Board of Appeal.

11      OHIM and the intervener contend that the Court should:

–        dismiss the action for annulment in its entirety;

–        order the applicant to pay the costs.

 Law

12      The applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. It disputes, in essence, the similarity of the goods and services at issue.

13      OHIM and the intervener contend that this plea should be rejected.

14      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.

15      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).

16      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).

17      It is in the light of those considerations that the applicant’s single plea in law must be examined.

18      In the present case it must be stated that the Board of Appeal defined the relevant public as consisting of average consumers within the European Union whose level of attention is average. That definition may be accepted and has not, moreover, been disputed either by the applicant or by the intervener.

19      It is also indisputable that the signs at issue are identical.

20      Consequently, the only point of contention is whether the Board of Appeal was right to find that the goods and services at issue were sufficiently similar to conclude that there was a likelihood of confusion on the part of the relevant public.

21      According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and the case-law cited).

22      The Board of Appeal found, in paragraph 20 of the contested decision, that the degree of similarity between the goods and services at issue was average and that, in view of that similarity in addition to the identity of the signs at issue, there was a likelihood of confusion.

23      That finding must be upheld.

24      It is indeed the case, as the applicant submits, that a product is a tangible object whereas a service is an activity. However, that difference does preclude the existence of any similarity between goods and services. Furthermore, contrary to what the applicant claims, the Board of Appeal admitted, in paragraph 16 of the contested decision, that the goods protected by the earlier mark and the services covered by the trade mark application were different in nature. It did not therefore fail to examine the difference in nature between the goods and services.

25      In line with what the Board of Appeal stated, it must be held that the goods and services at issue share the same overall purpose which is beauty and health care (see, to that effect, judgment of 22 May 2012 in Olive Line International v OHIM — Umbria Olii International (O·LIVE), T‑273/10, EU:T:2012:246, paragraph 35).

26      Soaps, cosmetic goods, perfumes and other goods in Class 3 are designed to be applied to the human body for the purpose of cleaning it, making it smell nice, altering its appearance, protecting it or keeping it in good condition.

27      Likewise, it cannot reasonably be disputed that the purpose of spas, Turkish baths and sauna services is also to wash, purify and make the human body more attractive.

28      Furthermore spas, Turkish baths, sauna services and health spa services often include cosmetic treatments requiring the use of soaps, fragrances, oils and other beauty products. The establishments which provide such services may also offer for sale beauty and health products bearing their trade mark or, as the case may be, goods from an outside supplier.

29      Consequently, the Board of Appeal could reasonably take the view that the distribution channels might overlap and that the target public was identical.

30      As regards the complementarity between the goods and services at issue, it must be pointed out, as did the Board of Appeal, that there is some complementarity between those goods and services. The treatments in spas, Turkish baths and health spas is usually followed by the application of body lotions and moisturising creams and the public may expect treatment with these products when they are in a spa, Turkish bath or health spa.

31      Moreover, except perhaps in the case of the Nordic countries, for the majority of the public in the European Union there is no great difference between a sauna, a spa centre, a Turkish bath or a health spa given that modern centres frequently offer a combination of those services or all of them.

32      Furthermore, the fact that the applicant provides its spas, Turkish baths, sauna services and health spa services on board cruise ships does not in any way alter their overall purpose, which is that of providing beauty and health care and care for a person’s wellbeing. Furthermore, it is apparent from the file before OHIM that the applicant also sells beauty care products in connection with the services offered under the mark SAMSARA on board the cruise ships in question and that it describes the SAMSARA spa as ‘a beauty farm that looks out to sea’ stating that the treatment offered comprises ‘Body Care … Face Care … Beauty Salon’.

33      In so far as the applicant claims that its services serve an essentially curative purpose, relying in that regard on the definitions given in various dictionaries and encyclopaedias according to which a spa refers to a place in which hydrotherapy or, more generally speaking, wellbeing services and body treatments are provided, it must be stated that there is nothing in the file to indicate that the applicant’s services exclusively serve such a purpose. The fact that the services are provided on board cruise ships confirms that the public does not consist solely of persons who need medical treatment. Furthermore, the applicant does not explain to what extent the facilities and equipment on board Costa Crociere ships differ from those of other spa centres or from those of a ‘dry land’ spa.

34      Consequently, the claim relating to the dissimilarity of the goods and services at issue must be rejected.

35      As regards the judgments of the Tribunale di Milano (District Court, Milan, Italy) and the Corte d’appello di Milano (Court of Appeal, Milan) according to which the applicant’s use of the word ‘samsara’ in respect of spa services did not adversely affect the intervener’s SAMSARA trade mark, it must be borne in mind that the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system. OHIM and, as the case may be, the Courts of the European Union are not bound by a decision given in a Member State or a non-member country which finds that the goods and services concerned are not similar (see, to that effect, judgment of 5 December 2000 in Messe München v OHIM (electronica), T‑32/00, ECR, EU:T:2000:283, paragraph 47, and judgment of 21 January 2009 in giropay v OHIM (GIROPAY), T‑399/06, EU:T:2009:11, paragraph 46). Moreover, the intervener stated at the hearing that it had lodged an appeal before the Corte Suprema di Cassazione (Supreme Court of Cassation) and thus the outcome of the dispute between the applicant and the intervener is not yet known.

36      Furthermore, as regards the applicant’s argument that the Board of Appeal did not take into account the actual circumstances of use of the earlier mark, it is sufficient to point out that, in paragraph 14 of its decision, the Board of Appeal stated that the applicant had not requested proof of use of the earlier mark and that it, rightly, concluded from that that it had to take into consideration the goods for which the earlier mark was registered.

37      It is also not possible to accept the applicant’s argument that the intervener cannot claim rights in the word ‘samsara’ in respect of the services covered by the applicant’s trade mark application as a result, first, of the lack, or low degree, of distinctiveness of that word for distinguishing the services of spas, thermal baths and wellbeing centres and, secondly, of its descriptive character with regard to those services.

38      The word ‘samsara’ comes from Sanskrit and means ‘eternal cycle of life’. First, it must be pointed out that Sanskrit may hardly be regarded as a language which is known to the target consumers. Consequently, the great majority of the consumers will not associate any meaning with the word ‘samsara’. For them, it is more of a fanciful word. Secondly, even if some of the consumers know the meaning of that word, it must be held that the Board of Appeal was entitled to find that the abovementioned meaning was not descriptive of either the goods for which the earlier trade mark enjoys protection or the services covered by the trade mark application. Furthermore, the documents which the applicant submitted to show some use of the word ‘samsara’ by third parties and in the spa sector are not capable of casting doubt on the aforementioned finding. A large number of those documents refer to countries outside of the European Union or to different sectors of goods in Class 3 and services in Class 44.

39      It follows from the foregoing that the Board of Appeal did not err in finding that, given the average degree of similarity of the goods and services at issue and the identity of the signs, there was a likelihood of confusion in respect of all the services referred to in the trade mark application, including those which the applicant seeks to maintain in its alternative claim. It follows that, for that reason, the third head of claim can also not succeed.

40      The single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must therefore be rejected and, consequently, the action must be dismissed in its entirety.

 Costs

41      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.

42      Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener.

On those grounds,

THE GENERAL COURT (Eighth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Costa Crociere SpA to pay the costs.

Gratsias

Kancheva

Wetter

Delivered in open court in Luxembourg on 26 February 2015.

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