JUDGMENT OF THE GENERAL COURT (First Chamber)

23 October 2015 (*)

(Community trade mark — Opposition proceedings — Application for the Community word mark ATHEIST — Earlier national word mark athé — Relative ground for refusal — Article 8(1)(b) and (2) of Regulation (EC) No 207/2009)

In Case T‑714/14,

David Bonney, residing in London (United Kingdom), represented by D. Farnsworth, Solicitor,

applicant,

v

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by L. Rampini, and subsequently by D. Walicka, acting as Agents,

defendant,

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

Vanessa Bruno, residing in Paris (France),

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 5 August 2015 (Case R 803/2013-4), relating to opposition proceedings between Ms Vanessa Bruno and Mr David Bonney,

THE GENERAL COURT (First Chamber),

composed of H. Kanninen (Rapporteur), President, I. Pelikánová and E. Buttigieg, Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 8 October 2014,

having regard to the response lodged at the Court Registry on 16 January 2015,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Rules of Procedure of the General Court of 2 May 1991,

gives the following

Judgment

1 On 9 June 2011, the applicant, Mr David Bonney, 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 ATHEIST.

3 The goods and services in respect of which registration was sought are in Classes 18, 25 and 35 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.

4 The Community trade mark application No 010034874 was published in the Community Trade Marks Bulletin of 12 September 2011.

5 On 12 December 2011, Ms Vanessa Bruno (‘the opponent’), filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for in respect of part of the goods and services for which registration was sought.

6 The opposition was based on the following earlier rights:

– the French mark athé, registered on 27 June 2003 and renewed on 23 January 2013, under No 33205401, covering goods and services in Classes 3, 9, 14, 18 and 25 corresponding to the following description:

– Class 3: ‘Perfumery products, cosmetics, essential oils, hair lotions, soaps, shampoos, skin tanning creams’;

– Class 9: ‘Spectacles, sunglasses, spectacle cases’;

– Class 14: ‘Precious metals and alloys thereof other than for dental use; jewellery, bijouterie, precious stones; timepieces; chronometric instruments’;

– Class 18 : ‘Leather and imitations thereof; animal skins, hides; trunks and suitcases; umbrellas, parasols and walking sticks; whips and saddlery; bags, briefcases and travelling sets made of leather, wallets, purses, not of precious metal, cardholders, document wallets, handbags, back bags, travelling bags, school bag, beach bags’;

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

– the international registration of the mark athé, filed on 8 July 2003 and extended until 2023, under No 808542, covering the same goods as the French mark athé, protected, inter alia, in Austria, Benelux, Germany, Denmark, Spain, the United Kingdom, Greece and Italy.

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

8 By decision of 28 February 2013, based solely on the French mark athé (‘the earlier mark’), the Opposition Division upheld the opposition in part, namely for the goods and services referred to in Classes 18, 25 and 35 corresponding to the following description:

– Class 18: ‘Purses; bags; casual bags; leather bags; shoulder bags; canvas bags; shopping bags; articles made from animal hides; articles made from animal skins; articles made from fur; articles made from imitation leather; articles made from leather; articles made from the skin of amphibians; articles made from the skin of birds; articles made from the skin of mammals; articles made from the skin of reptiles; articles of luggage; articles of luggage being bags; athletics bags; attache’ cases; backpacks; bag covers; baggage; bags; bags for travel; bags for shopping; laundry bags; bags for cyclists; bags for campers; bags for carrying sports implements; bags for climbers; bags for clothes; bags for clothes pegs; bags for shaving kits; sports bags; bags for toiletry kits; bags for use in sports for carrying sports clothing; bags made of imitation leather; bags made of leather; bags made of plastics materials; beach bags; beauty cases; belt bags; cases for holding keys; cases for keys; cases for sporting articles; cases for travel kits; casual bags; clutch bags; clutch purses; coin purses; cosmetic bags; cosmetics bags; cosmetic purses; courier bags; diplomatic bags; dispatch cases; duffel bags; evening bags; evening purses; flight bags; handbags; handbags made of imitations leather; handbags made of leather; key cases; key cases made of leather; key cases made principally of imitation leather; key cases made principally of leather; leather bags; leather cases; leather notecases; leather purses; leather travelling suitcases; luggage; luggage bags; make-up bags; make-up cases; net bags for shopping; overnight bags; overnight cases; notecases; portable bags; rucksacks; satchels; shaver bags; toilet bags; toiletry bags; towelling bags; travel baggage; travel bags; travel bags made of plastic materials; travelling bags; travelling bags made of imitation leather; travelling bags made of leather; travelling cases; travelling handbags; travelling sacks; travelling trunks; waist bags; waist pouches; weekend bags; wheeled shopping bags’;

– Class 25: ‘Shoes, running shoes, casual shoes, clothing in general, trousers, anoraks, jeans, sweaters, dresses, socks, underwear, hats, caps, ties, jackets, coats, blazers, wrist bands, jumpers, slippers, sandals, anoraks, aprons, ankle boots, armbands, articles of athletic clothing, articles of beachwear, articles of casual clothing, articles of casual wear, articles of childrens’ clothing, articles of clothing for babies, articles of clothing for children, articles of clothing for casual wear, articles of clothing for infants, articles of clothing for men, articles of clothing for women, articles of clothing for nightwear, articles of clothing for swimwear, articles of clothing for sportswear, articles of clothing for underwear, articles of clothing for wet weather use, articles of clothing incorporating imitation suede, articles of clothing incorporating suede, articles of clothing made from cotton denim, articles of clothing made from denim cotton, articles of clothing made from denim material, articles of clothing made from imitation suede, articles of clothing made from knitted fabrics, articles of clothing made from natural fibres, articles of clothing made from stretchable fabrics, articles of clothing made from suede, articles of clothing made from synthetic fabric, articles of clothing made from textile materials, articles of clothing made from textiles, articles of clothing made from towelling materials, articles of clothing made from wool, articles of clothing made from woven fabrics, articles of clothing made of cut-pieced fleece, articles of clothing made of fur, articles of clothing made of hides, articles of clothing made of imitation leather, articles of clothing made of knitted materials, articles of clothing made of leather, articles of clothing made of plush, articles of clothing of knitted fabric, articles of clothing of leather, articles of clothing, articles of footwear, articles of footwear for athletics, articles of footwear for children, articles of footwear for infants, articles of footwear for sport, articles of headgear, articles of knitwear, articles of leather clothing, articles of legwear, articles of leisure clothing, articles of leisurewear, articles of rainwear, articles of underclothing, athletics shoes, athletics shoes for basketball, athletics wear, babies’ bibs, babies’ diapers of textile, basketball shoes, bath robes, bath sandals, bath shoes, bath slippers, bathing caps, bathing costumes, beach clothes, belts, berets, bermuda shorts, bikinis, blazers, blindfolds for wear, bow ties, boxer shorts, boys’ clothing, braces for clothing, brassieres, breeches, breeches, briefs, business suits, canvas shoes, cap peaks, capes, shower caps, cardigans, cashmere articles of clothing, cashmere gloves, cashmere scarves, cashmere shoulder wraps, cashmere skirts, cashmere sweaters, cashmere trousers, cashmere waistcoats, casual clothing, casual footwear, casual jackets, casual shirts, casual trousers, casualwear, children’s clothing, clogs, cloth diapers, cloth napkins for babies, clothes, clothing for gymnastics, clothing for leisure wear, clothing for sportswear, clothing for wear in bed, clothing for wear in connection with bathing, clothing made from knitted materials, clothing made from terry towelling, clothing of fur, clothing of imitations of leather, clothing of leather, clothing, coats, coats made of cotton, coats made of wool, cocktail dresses, corduroy trousers, cotton coats, cotton shirts, cravats, flat caps, flip-flops, footwear, gloves, hats, headscarfs, headscarves, inner soles, jackets, jackets being sports clothing, jackets for casual wear, jogging bottoms, jumpers, parts of footwear, plimsolls, sandals, pyjamas, shoes, shoe soles, pumps, shoes for casual wear, shoes for infants, shoes for leisurewear, shoes, silk articles of clothing, silk scarves, silk ties, slippers, socks, sun visors, sun hats, sweat bands for the head, sweat bands for the wrist, sweat bottoms, sweat pants, sweat suits, swimming caps, swimming costumes, swimming robes, swimming shorts, swimming suits, swimming suits, wetsuits, swimming trunks, swimsuits, tracksuits, vests, trousers, Wellington boots, wellingtons, wooden shoes, woollen gloves, woollen outerclothing, woollen scarves, wristbands, t-shirts, sweatshirts, baseball caps’;

– Class 35: ‘retail (whether in store, by mail order, telephone, or via the internet) of clothing, footwear and bags’.

9 On 26 April 2013, the applicant filed a notice of appeal with OHIM against the decision of the Opposition Division.

10 By decision of 5 August 2014 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed that appeal. First, it found, in paragraph 20 of the contested decision, that the opponent had established, before the Opposition Division and following the application made by the applicant to that effect under Article 42 of Regulation No 207/2009, that the earlier mark had been put to genuine use in France for ‘bags’ and ‘handbags’ in Class 18 and for ‘clothing’ and ‘footwear’ in Class 25. Second, the Board of Appeal found, in paragraph 23 of the contested decision, that the relevant public was the French end consumer. Third, in paragraph 24 of the contested decision, the Board of Appeal concluded that the goods and services for which the opposition had been upheld were either similar or identical to the goods for which the opponent had established genuine use of the earlier mark. Fourth, as regards the comparison of the signs, the Board of Appeal found, in paragraphs 27 to 29 of the contested decision, that the mark applied for and the earlier mark were similar to a medium degree visually and phonetically and highly similar conceptually. Finally, fifth, as regards the global assessment of the likelihood of confusion, the Board of Appeal, in paragraphs 32 to 34 of the contested decision, found that the level of attention of the relevant public was normal and taking account, (i), of the similarly of the marks at issue, and (ii), of the identity and similarly of the goods and services covered, it was not inconceivable that the relevant public would assume that the goods and services were supplied or provided by the same undertakings.

Forms of order sought

11 The applicant claims that the Court should:

– annul the contested decision;

– reject the opposition brought against the application for a Community trademark;

– 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, in essence, a single plea in law in support of its action, alleging infringement of Article 8(1)(b) of Regulation No 207/2009. It claims that the Board of Appeal’s conclusion that there is a likelihood of confusion between the signs at issue is wrong on the grounds that, first, the Board of Appeal overestimated, on the one hand, the degree of phonetic and visual similarity between those signs and, on the other hand, the extent to which the consumer would perceive a conceptual similarity and, second, it did not take sufficient account of the fact that the signs at issue were words belonging to two different languages.

14 OHIM disputes the applicant’s arguments. As regards the applicant’s second head of claim, OHIM maintains that it is inadmissible.

15 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.

16 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). 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).

17 Since the earlier mark is a French mark and taking account of the nature of the goods and services referred to in paragraphs 8 and 10 above, the Board of Appeal was correct to consider that the relevant public was the French consumer and that its level of attention was normal, which the applicant does not dispute.

18 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).

19 It is not in dispute that the goods or services covered by the mark applied for and referred to in paragraph 8 above, on one hand, and bags, handbags, clothing and shoes covered by the earlier mark, on the other hand, are identical or similar, as was rightly held by the Board of Appeal.

20 It is therefore necessary to examine whether the Board of Appeal was right to find that, account being taken of the degree of similarity between the signs at issue, there was a likelihood that the relevant public might believe that those goods and services came from the same undertaking or from economically-linked undertakings.

21 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).

22 As regards the visual comparison of the signs at issue, it should be noted that the initial part of the mark on which the consumer’s attention is in particular directed (see, to that effect, judgment of 17 March 2004 in El Corte Inglés v OHIM — González Cabello and Iberia (MUNDICOR), T‑183/02 and T‑184/02, ECR, EU:T:2004:79, paragraphs 81 and 83), fully reproduces the earlier mark, although without an accent on the letter ‘e’. Since the only difference between the signs at issue is the absence of that accent and the presence of the letters ‘i’, ‘s’ and ‘t’ at the end of the mark applied for, the Board of Appeal was entitled to consider, without making an error, that the signs at issue were similar to a medium degree in their overall visual impression. In that regard, the applicant moreover merely observed that the presence or absence of the accent on the letter ‘e’ was visually significant.

23 As regards the phonetic comparison of the signs, it should be noted that, contrary to what the applicant claims, a French-speaking consumer would pronounce the common parts of those signs in the same way, despite the lack of an accent on the letter ‘e’ of the mark applied for. Therefore, the Board of Appeal did also not make an error in finding that the signs at issue were similar to a medium degree in their overall phonetic impression.

24 As regards, finally, the conceptual comparison of the signs at issue, it is appropriate to consider that, as the Board of Appeal rightly stated in paragraph 29 of the contested decision, the earlier mark will be perceived as meaning ‘athée’ (‘atheist’ in English), as the pronunciation of that word is identical to the earlier mark and the words are visually very similar. As for the mark applied for, which has no direct meaning in French, it could also be perceived by French consumers who do not understand English or by those who do not realise that it is an English word, as a reference to the French word ‘athée’, which would undoubtedly be strengthened by the similarity between the mark applied for and the French word ‘athéiste’, whose the meaning, as the Board of Appeal has rightly found, is the same as the word ‘athée’. Finally, French consumers who understand the meaning of the English word ‘atheist’ are bound to perceive the signs at issue as being very similar conceptually.

25 Contrary to what the applicant claims, the Board of Appeal was right to find that the signs at issue were very similar conceptually.

26 That conclusion cannot be weakened by the applicant’s argument that the Board of Appeal ought to have taken account of the fact that the words ‘athé’ and ‘atheist’ come from different languages, namely, respectively, French and English.

27 First, contrary to what the applicant claims, the Board of Appeal did not find, in paragraph 29 of the contested decision, that the average French consumer would recognise an English word in the mark applied for. The Board of Appeal indicated only that the fact that the sign ATHEIST ‘[was] an English, and thus, a foreign word, does not mean that it [was] not understood by the French public’. As already observed in paragraph 24 above, the Board of Appeal was right to state that the word ‘atheist’ will most likely be understood in France.

28 Second, the applicant’s argument that, even if it may be common for a mark to be used as a sub-brand of another mark or for it to be part of a ‘family’ of marks that share a common element, producers invariably adopt a word in the same language as the precedent for the sub-brand or for the new family member is by no means substantiated and cannot therefore be upheld.

29 It is therefore not established that, as claimed by the applicant, the Board of Appeal ought to have given greater weight, in the context of its examination of the likelihood of confusion, to the fact that the mark applied for consists of an English word whereas the earlier mark is analogous to a French word.

30 Finally, 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 by those marks. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between those marks, and vice versa (judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and of 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).

31 In the present case, account being taken of the identity or similarity of the goods and services referred to in paragraphs 8 and 10 above, of the average similarity of the marks at issue visually and phonetically and their high similarity conceptually, the Board of Appeal was right to find that the relevant public might believe that the goods and services in question were supplied or provided by the same undertakings. In particular, it is not inconceivable that the relevant public might perceive those marks as being related marks, designating different product lines, in so far as the earlier mark is entirely contained in the mark applied for, although without an accent on the letter ‘e’.

32 It follows from all the foregoing considerations that the present plea in law must be rejected.

33 Since all the applicant’s heads of claim are based on that plea, it is necessary to dismiss the action without any need to examine the plea of inadmissibility raised by OHIM with regard to the second head of claim.

Costs

34 Under Article 134(1) 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 OHIM has applied for costs and the applicant has been unsuccessful, the latter must be ordered to bear his own costs and to pay those incurred by OHIM.

On those grounds,

THE GENERAL COURT (First Chamber)

hereby:

1. Dismisses the action;

2. Orders Mr David Bonney to bear his own costs and to pay those incurred by Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).

Kanninen

Pelikánová

Buttigieg

Delivered in open court in Luxembourg on 23 October 2015.

[Signatures]