JUDGMENT OF THE GENERAL COURT (Ninth Chamber)

11 December 2013 (*)

(Community trade mark – Opposition proceedings – Application for the Community figurative mark PANINI – Earlier national and Community word marks GRANINI – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑487/12,

Eckes-Granini Group GmbH, established in Nieder-Olm (Germany), represented by W. Berlit, lawyer,

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

Panini SpA, established in Modène (Italy), represented by F. Terrano, lawyer,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 6 September 2012 (Case R 2393/2011-2) relating to opposition proceedings between Eckes-Granini Group GmbH and Panini SpA,

THE GENERAL COURT (Ninth Chamber),

composed of G. Berardis, President, O. Czúcz and A. Popescu (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Court Registry on 9 November 2012,

having regard to the response of OHIM lodged at the Court Registry on 22 February 2013,

having regard to the response of the intervener lodged at the Court Registry on 11 February 2013,

having regard to the change in the composition of the Chambers of the Court,

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 and pursuant to Article 135a of the Rules of Procedure of the Court, to give a ruling without an oral procedure,

gives the following

Judgment

 Background to the dispute

1        On 30 November 2009, the intervener, Panini SpA, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2        The mark in respect of which registration was sought is the figurative sign reproduced below:

3        The goods in respect of which registration was sought fall within Class 32 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: ‘Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 29/2010 of 15 February 2010.

5        On 23 April 2010, the applicant, Eckes-Granini Group GmbH, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 against registration of the mark applied for in respect of goods falling within Class 32 and corresponding to the following description: ‘Non-alcoholic beverages, fruit drinks and fruit juices’. In the administrative proceedings the opposition was regarded as being directed against all of the goods covered by the trade mark applied for and that is not challenged by the parties.

6        The opposition was based on the following earlier trade marks:

–        the Community word mark GRANINI, registered on 21 August 1998 under number 121780;

–        the German word mark GRANINI, registered on 19 May 2003 under number 30315871.

7        Those marks were registered, inter alia, in respect of goods falling within Class 32 and corresponding to the following description: ‘Non-alcoholic beverages, fruit drinks and fruit juices’.

8        The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 207/2009.

9        Following a request made by the intervener, the applicant submitted evidence in order to prove genuine use of the earlier trade marks within the meaning of Article 42(2) and (3) of Regulation No 207/2009.

10      On 23 September 2011, the Opposition Division rejected the opposition in its entirety.

11      On 21 November 2011 the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

12      By decision of 6 September 2012 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. The Board held, first, that the relevant territory was that of the European Union and that the relevant public consisted of consumers who were average members of the general public, deemed to be reasonably well informed and reasonably observant and circumspect. The Board held, secondly, that, assuming that the evidence produced by the applicant was deemed sufficient to show adequate use of the earlier marks on the goods referred to in paragraph 7 above, those goods and the goods covered by the trade mark applied for were identical or similar. The Board held, thirdly, that the signs at issue were slightly similar from a visual and phonetic point of view and that in some Member States there was a clear conceptual difference between the signs at issue, whereas, in other Member States, no comparison could be made. The Board of Appeal concluded that the dissimilarities between the signs at issue outweighed the similarities. It also considered that, even if it were established that the earlier marks possessed ‘notoriety’ or ‘reputation’, that could not in any way affect the finding that the signs were dissimilar overall. Fourthly, within the context of the global assessment of the likelihood of confusion, the Board of Appeal held that, even if reputation were established for the earlier marks, and use of the earlier marks were demonstrated with respect to the goods for which they were registered, the dissimilarity between the signs at issue eliminated any likelihood of confusion between them.

 Forms of order sought

13      The applicant claims that the Court should:

–        annul the contested decision;

–        order OHIM to pay the costs.

14      OHIM claims that the Court should:

–        dismiss the appeal in its entirety;

–        order the applicant to pay the costs incurred by OHIM.

15      The intervener contends that the Court should:

–        uphold the contested decision;

–        order the applicant to pay the costs.

 Law

16      As a preliminary point, with regard to the intervener’s first head of claim, it must be stated that, given that upholding the contested decision is tantamount to dismissing the action, the intervener’s first head of claim should be understood as requesting, in essence, that the action be dismissed.

17      In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

18      The applicant essentially claims that the degree of similarity of the signs at issue is average, or even high, and taking into account the identical nature or high degree of similarity of the goods in question, the Board of Appeal was wrong in concluding that there was no likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.

19      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 cannot be registered if, because of its identity with, or similarity to, the earlier trade mark and, because of 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. In addition, under Article 8(2)(a)(ii) of that regulation, ‘earlier trade marks’ includes national trade marks with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

20      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 from economically-linked undertakings constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion must be assessed globally according to the relevant public’s perception of the signs and the goods or services in question, and by 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 designated (see Case T-162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, 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 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 Case T-256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).

21      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 Case T-316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II-43, paragraph 42 and the case-law cited).

22      The assessment by the Board of Appeal of the likelihood of confusion between the signs at issue must be examined in the light of the foregoing considerations.

The relevant public

23      The definition of the relevant public is not disputed by the parties and there is no reason for it to be called into question. In that regard, the Board of Appeal held in paragraphs 19 and 31 of the contested decision that the relevant territory was that of the European Union and that, having regard to the goods in question, the relevant public consisted of consumers who were average members of the general public, deemed to be reasonably well informed and reasonably observant and circumspect.

 Comparison of the goods

24      As regards the comparison of the goods in question, the applicant states that it does not dispute the findings of the Board of Appeal and that those goods are either identical or highly similar.

25      In that regard, it should be pointed out that the Board of Appeal held in paragraph 20 of the contested decision that the goods in question, which fall within Class 32, were identical or similar, but did not state that some of those goods were highly similar.

26      Thus the Board of Appeal held in paragraph 20 of the contested decision that ‘mineral and aerated waters and other non-alcoholic drinks’ and ‘fruit drinks and fruit juices’ covered by the trade mark applied for were identical to ‘non-alcoholic drinks, fruit drinks and fruit juices’ covered by the earlier trade marks and that ‘beers’ and ‘syrups and other preparations for making beverages’ covered by the trade mark applied for and the ‘non‑alcoholic drinks, fruit drinks and fruit juices’ covered by the earlier trade marks were similar. Having regard to the applicant’s failure to put forward arguments so as to specifically establish a high degree of similarity between some of the goods in question, those findings must be confirmed.

 Comparison of the signs

27      The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (Case C-334/05 P OHIM v Shaker [2007] ECR I-4529, paragraph 35 and the case-law cited).

28      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 OHIM v Shaker, 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 (OHIM v Shaker, paragraph 42, and Case C-193/06 P Nestlé v OHIM [2007] ECR I‑0000, paragraph 42). That could be the case in particular where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (Nestlé v OHIM, paragraph 43).

29      The Board of Appeal held in paragraphs 22 to 24 of the contested decision that the signs at issue were slightly similar from a visual and phonetic point of view and that in some Member States there was a clear conceptual difference between those signs, whereas, in other Member States, no comparison could be made. The Board of Appeal held in paragraph 25 of the contested decision that the dissimilarities between the signs outweighed the similarities and in paragraph 29 of the contested decision that the signs were dissimilar overall.

30      The applicant claims that the Board of Appeal’s assessment is erroneous because the signs at issue have an average, or even high, degree of similarity. They are highly similar from a visual and phonetic point of view – which OHIM and the intervener dispute – whereas no comparison can be made from a conceptual point of view.

31      In the present case, the signs to be compared are the following:

Earlier trade marks

Trade mark applied for

GRANINI

 The visual comparison

32      As regards a visual comparison, there is nothing to prevent a determination of any visual similarity between a word mark and a figurative mark, since both types of mark have graphic form capable of creating a visual impression (see Case T‑359/02 Chum v OHIM – Star TV (STAR TV) [2005] ECR II-1515, paragraph 43 and the case-law cited).

33      In the first place, in paragraph 22 of the contested decision, the Board of Appeal took into account the overall impression given by the signs in question when they are compared visually. It found that the trade mark applied for contained graphic features and a verbal element, whereas the earlier signs consisted of a verbal element but had no graphic feature whatsoever and had no representation of a ‘knight’ or any coloured elements.

34      As regards the similarity of the signs at issue, the applicant claims that the global assessment of the likelihood of confusion must be based on the overall impression given by them, bearing in mind, in particular, their distinctive and dominant components. However, although the applicant mentions the existence of a figurative element of the trade mark applied for, it does not claim that that element constitutes a negligible component in the overall impression given by that trade mark, and it compares the signs at issue only by taking into account their verbal elements, namely the terms ‘panini’ and ‘granini’.

35      It is important to note that, as the Board of Appeal stated in paragraph 22 of the contested decision, whereas the earlier trade marks are made up of a verbal element, the trade mark applied for consists of both figurative elements and a verbal element. The trade mark applied for is a composite trade mark made up of the word ‘panini’ in red letters with a black outline, surmounting a representation of an elongated ‘lance’ wielded by a ‘medieval knight’ at the left-hand edge of the sign and wearing a helmet with stylised red feathers and carrying a shield represented by an orange rectangle in which there are three hexagons placed side by side, each one containing a different letter in its centre, namely the letters ‘e’, ‘p’ and ‘m’. All those elements are portrayed against a bright yellow rectangular background with a black border. Those figurative elements and the verbal element ‘panini’, and more precisely their positioning and respective colours, help to establish the image of the trade mark applied for which the relevant public will keep in mind, and they cannot therefore be discounted when that trade mark is perceived, with the exception, however, of the three letters ‘e’, ‘p’ and ‘m’ since they are written in a font which is too small for them to be easily and clearly distinguished.

36      Therefore, in accordance with the case-law noted in paragraph 28 above, the visual comparison of the signs at issue must be carried out on the basis of all of their various constituent elements, with the exception of the three letters ‘e’, ‘p’ and ‘m’ in the trade mark applied for.

37      In the second place, following the visual comparison of the signs at issue, it must be held that, in paragraph 22 of the contested decision, the Board of Appeal incorrectly concluded that the trade mark applied for and the earlier trade marks, each considered as a whole, had a low degree of similarity.

38      First, as the figurative elements making up the trade mark applied for, described in paragraph 35 above, do not constitute merely negligible decorative components, they help to create a very different visual impression between the signs at issue.

39      Second, as regards the visual comparison of the verbal elements of the signs at issue, the Board of Appeal was right to hold in paragraph 22 of the contested decision that, although the elements ‘panini’ and ‘granini’ consist of six and seven letters respectively and have the same last five letters in the same order, their beginnings, namely ‘pa’ and ‘gra’, are substantially different.

40      That finding is not called into question by the applicant’s argument that the Board of Appeal’s assessment that the attention of consumers will focus on the beginning of the verbal elements of the signs, namely ‘pa’ and ‘gra’, is unfounded. The applicant also queries whether the consumer would normally focus on the beginning of the two trade marks.

41      First of all it should be noted that the first part of a trade mark normally has a greater visual impact than the final part (see Case T‑276/10 El Coto De Rioja v OHIM – Álvarez Serrano (COTO DE GOMARIZ) [2011] ECR II-0000, paragraph 39 and the case-law cited).

42      It should further be noted that the applicant cites paragraph 39 of Case T‑273/02 Krüger v OHIM – Calpis (CALPICO) [2005] ECR II-1271, according to which, in the case of relatively short word marks, the central elements are as important as the elements at the beginning and end of the sign. It should be noted that, in paragraph 39 of that judgment, the Court essentially held that the signs at issue, ‘CALPICO’ and ‘CALYPSO’, were different even though the first three letters were the same, on the basis that their central letters were different. However, that judgment merely confirms that signs may be considered to have little similarity or even be different, from a visual point of view, even though they contain a sequence of identical letters. If that finding is valid where, as in the facts of the case which gave rise to that judgment, that sequence is at the beginning of the signs at issue, it is all the more so in the present case where the sequence of identical letters is not at the beginning of the signs to be compared. In that connection, the applicant also claims that, as the rule that the consumer’s attention will focus on the beginnings of the signs at issue is the rule that normally applies and is therefore subject to exceptions, that rule is not called into question by the fact that the Court has found in certain cases, in respect of relatively short word signs, that the central elements are as important as the elements at the beginning and end of the sign. Consequently, the applicant’s argument seeks to confirm the existence of a general rule that the consumer normally attaches more importance to the initial part of words. In addition, the part of the signs on which the stress will be placed is of little importance, as that consideration is irrelevant to a visual comparison of the signs at issue.

43      The applicant’s argument is therefore not of such a kind as to call into question the Board of Appeal’s assessment in the present case that the consumers’ attention will focus on the beginning of the verbal elements of the signs, namely ‘pa’ and ‘gra’.

44      It must also be noted that, according to the case-law, even where two trade marks are composed of highly similar verbal elements – which is not the case here – that fact does not, by itself, support the conclusion that there is a visual similarity between the signs. The presence, in one of the signs, of figurative elements set out in a specific and original way can have the effect that the overall impression conveyed by each sign is different (Case T-3/04 Simonds Farsons Cisk v OHIM – Spa Monopole (KINJI by SPA) [2005] ECR II‑4837, paragraph 48; see also, to that effect, GIORGIO BEVERLY HILLS, paragraph 74).

45      Therefore, in the present case, even on the assumption that the consumer’s attention does not focus more on the beginning of the verbal elements of the signs at issue, having regard to the difference between those verbal elements taken as a whole and to the differences linked to the figurative elements of the trade mark applied for, the signs at issue produce a different overall visual impression and, contrary to the Board of Appeal’s assessment in paragraph 22 of the contested decision, do not have a low degree of visual similarity, or, a fortiori, as the applicant maintains, a high degree of similarity.

46      In the light of the foregoing considerations, it must be concluded that the signs at issue produce a different overall visual impression.

 The phonetic comparison

47      The Board of Appeal held in paragraph 23 of the contested decision that the trade mark applied for and the earlier trade marks had a low degree of phonetic similarity. It held that the signs at issue were sounded in three syllables and that, although the signs coincide in the last two syllables, there was only a low similarity between ‘pa’ and ‘gra’, because the presence of the letter ‘r’ in ‘gra’ lengthened the syllable and served to increase the distance between the initial ‘g’ in ‘gra’ and the ‘p’ in ‘pa’. The Board of Appeal pointed out that it was well established that the first part of the sign generally possessed greater weight, since it was the part capturing the consumer’s attention, rather than the middle and ending part which is often sounded faintly, slurred or dropped altogether.

48      The applicant claims that the Board of Appeal’s assessment is wrong since it did not examine whether the consumer’s attention will focus on the beginning of the verbal elements in all languages of the European Union. The applicant points out that, according to settled case-law, the first part of the sign is not always that possessing greater weight (Case T-221/09 Ergo Versicherungsgruppe v OHIM – Société de développement et de recherche industrielle (ERGO Group) [2011] ECR II-0000). Furthermore, in many European Union languages, the consumer does not place the stress on the beginning of a word and on the first syllable (Case T-366/11 Bial-Portela v OHIM – Isdin (ZEBEXIR) [2012] ECR II-0000). Thus, in Spain, France, Italy and Portugal, the consumer would place the stress on the second part of the sign (see Case T-546/10 Nordmilch v OHIM – Lactimilk (MILRAM) [2012] ECR II-0000, paragraphs 39 and 40, and the case-law cited). The applicant infers from this that, as the verbal elements of the signs at issue have their last two syllables in common and only differ in their first syllable, those signs have a high degree of similarity.

49      It must be pointed out that, in the strict sense, the phonetic reproduction of a composite trade mark corresponds to that of all its verbal elements, regardless of their specific graphic features, which fall more within the analysis of the sign on a visual level (see Case T-352/02 Creative Technology v OHIM – Vila Ortiz (PC WORKS) [2005] ECR II-1745, paragraph 42, and Case T-204/09 Olymp Bezner v OHIM – Bellido (OLYMP) [2011] ECR II-0000, paragraph 42). Therefore, the figurative elements of the mark applied for should not be taken into account for the purpose of a phonetic comparison with the earlier marks.

50      In the present case, in the phonetic comparison the verbal element ‘granini’ making up the earlier trade marks must therefore be compared with the verbal element of the trade mark applied for, namely the word ‘panini’, as the letters ‘e’, ‘p’ and ‘m’ are negligible elements (see paragraph 35 above).

51      The verbal elements ‘panini’ and ‘granini’ are both made up of three syllables. Whereas the first of the three syllables of the signs at issue is different, the second and third syllables are identical. It must be held that, as the second and third syllables of the elements ‘panini’ and ‘granini’ are the same, they will be pronounced in an identical manner. By contrast, even if, as the applicant claims, the stress in some languages is not placed on the first syllable of the verbal elements ‘panini’ and ‘granini’, that first syllable will be pronounced, and, as OHIM correctly observes, it will be pronounced differently in all the European Union languages. In that regard, the Board of Appeal was right to hold in paragraph 23 of the contested decision that the presence of the letter ‘r’ in ‘gra’ lengthened the syllable and served to increase the distance between the initial ‘g’ in ‘gra’ and the ‘p’ in ‘pa’.

52      In those circumstances, it must be held that, even in the languages in which the stress is not placed on the first syllable of the verbal elements ‘panini’ and ‘granini’, the difference in pronunciation of that first syllable is of such a kind as to reduce the impression of phonetic similarity between the signs in question. Contrary to what the applicant claims, a high degree of phonetic similarity between the signs at issue cannot therefore be found and the assessment of the Board of Appeal must be confirmed.

53      It follows from the foregoing considerations that, as the Board of Appeal concluded in paragraph 23 of the contested decision, the signs at issue, assessed in their entirety, have a low degree of phonetic similarity.

 The conceptual comparison

54      The Board of Appeal held in paragraph 24 of the contested decision that, in some Member States, for example, Italy and Spain, where the element ‘panini’ had a meaning, there was a clear conceptual difference between the signs at issue, whereas, in other Member States where the ‘panini’ element had no meaning, no comparison could be made.

55      The applicant claims that, as the signs at issue have no meaning, no comparison can be made from a conceptual point of view.

56      In that regard, it must be held that, as the element ‘granini’ has no meaning, there is a clear conceptual difference between the signs at issue for the Italian-speaking public, for which the element ‘panini’ has a meaning. It is thus understood as referring to ‘small bread rolls’ or sandwiches made from those small bread rolls, that latter meaning also being understood by a non-Italian-speaking public, for example by Spanish- or French-speaking consumers. No comparison can be made for the public for which the element ‘panini’ is wholly meaningless. The assessment of the Board of Appeal in paragraph 24 of the contested decision must therefore be confirmed.

57      It should be added, as OHIM correctly points out, that the figurative elements making up the trade mark applied for, such as the representation of the knight wearing a helmet and carrying a shield, as well as the ‘lance’, may be associated with the concept of the ‘medieval knight’, whereas that is not so in regard to the earlier trade marks, which also distinguishes the signs at issue from a conceptual point of view.

58      It must therefore be concluded, from a conceptual point of view, that the signs at issue are dissimilar or that no comparison is possible between them.

59      It follows from all the foregoing considerations that the signs at issue produce a different overall visual impression, that they have a low degree of phonetic similarity and that, from a conceptual point of view, they differ or cannot be compared.

 The overall impression

60      The Board of Appeal held, in paragraph 25 of the contested decision, that the dissimilarities between the signs at issue outweighed the similarities and, in paragraphs 28, 29 and 32 of the contested decision, that the signs were dissimilar or dissimilar overall.

61      According to the case-law, it is possible that mere phonetic similarity between two trade marks may create a likelihood of confusion (Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 28; Case T-211/03 Faber Chimica v OHIM – Industrias Quimicas Naber (Faber) [2005] ECR II-1297, paragraph 27; and Case T-106/06 Demp v OHIM – Bau How (BAUHOW) [2008] ECR II-0000, paragraph 42).

62      However, the finding of a phonetic similarity between two trade marks is not in itself a sufficient basis for holding that the trade marks in question, each considered as a whole, are similar (Case T-6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 31; Case T‑390/03 CM Capital Markets v OHIM – Caja de Ahorros de Murcia (CM) [2005] ECR II-1699, paragraph 44; and BAUHOW, paragraph 43).

63      In addition, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight. It is appropriate to examine the objective conditions under which the marks may be present on the market (Case T-129/01 Alejandro v OHIM – Anheuser-Busch (BUDMEN) [2003] ECR II-2251, paragraph 57, and Joined Cases T‑117/03 to T-119/03 and T-171/03 New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) [2004] ECR II‑3471, paragraph 49). The extent of the similarity or difference between the signs may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by the opposing trade marks are marketed. If the goods covered by the marks in question are usually sold in self-service stores where consumers choose the product themselves and must therefore rely primarily on the image of the trade mark applied to the product, the visual similarity between the signs will as a general rule be more important. If on the other hand the product covered is primarily sold orally, greater weight will usually be attributed to any phonetic similarity between the signs (NLSPORT, NLJEANS, NLACTIVE and NLCollection, paragraph 49, and BAUHOW, paragraph 44).

64      Likewise, the degree of phonetic similarity between the two marks is of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually perceives visually the mark designating those goods (Case T-292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-4335, paragraph 55; Case T-301/03 Canali Ireland v OHIM – Canal Jean (CANAL JEAN CO. NEW YORK) [2005] ECR II-2479, paragraph 55; and BAUHOW, paragraph 45).

65      In the present case, the goods in question are usually the subject of general distribution, from the food section of supermarkets, department stores and other retail outlets to restaurants and cafes. The supermarkets, department stores and other retail outlets often operate on the basis of self-service, even if they employ staff to help customers in their choice. Therefore, even though oral communication concerning the goods concerned and the trade marks is not excluded, the visual perception of the trade marks at issue will generally occur prior to purchase because the goods and their associated trade marks are displayed in those shops.

66      In addition, when the goods identified by the signs are sold in bars and restaurants, consumers in such places might see the trade marks mentioned on a menu or on bottles displayed on shelves behind the counter, so that they will also be able to visually examine the goods and associated trade marks prior to purchase. Moreover, even though consumers may order a beverage orally without having looked at those shelves beforehand they are, in any event, able to inspect the bottle which is served to them. Furthermore, in the case of mineral and aerated waters, fruit juices and syrups sold in bars and restaurants, consumers will not usually order them by name, but will merely give the generic name of those goods, for example a ‘still water’, a ‘sparkling water’, an ‘orange juice’ or a ‘peppermint cordial’, without citing a particular trade mark.

67      It follows that, in the present case, in the global assessment of the perception of the signs by the average consumer referred to in paragraph 23 above, the phonetic similarity between the signs must be considered as being of less importance than the visual differences existing between them.

68      Consequently, it must be held that, having regard to the low degree of phonetic similarity between the signs at issue, to their lack of visual similarity, to their lack of conceptual similarity or to the absence of a possible comparison between the signs from a conceptual point of view, those signs are dissimilar overall and that, contrary to what the applicant claims, overall those signs do not have a high, or even average, degree of similarity. The Board of Appeal therefore correctly concluded in paragraphs 28, 29 and 32 of the contested decision that the signs were different or different overall, its error in the assessment of the visual similarity between the signs not being capable of vitiating the finding relating to the overall comparison of the signs.

69      Therefore, it must be held that, within the context of the global assessment of the trade marks at issue, assuming that use of the earlier marks was demonstrated with regard to the goods for which they were registered and which are mentioned in paragraph 7 above, the signs in question are dissimilar and, in accordance with the case-law cited in paragraph 21 above, the existence of a likelihood of confusion on the part of the consumer concerned is excluded.

70      It follows from all the above considerations that, despite the error made by the Board of Appeal in the assessment of the visual similarity between the signs at issue, its assessment as regards the lack of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009 must be confirmed.

71      In those circumstances, the single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be rejected and, consequently, the application must be dismissed in its entirety.

 Costs

72      Under Article 87(2) of the Rules of Procedure of the 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 and by the intervener, as sought by them.

On those grounds,

THE GENERAL COURT (Ninth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Eckes-Granini Group GmbH to pay the costs.

Berardis

Czúcz

Popescu

Delivered in open court in Luxembourg on 11 December 2013.

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