JUDGMENT OF THE GENERAL COURT (Sixth Chamber)

25 September 2014 (*)

(Community trade mark — Invalidity proceedings — Community figurative mark sensi scandia — Earlier Community word mark SCANDIA HOME — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) and Article 53(1)(a) of Regulation (EC) No 207/2009)

In Case T‑516/12,

Ted-Invest EOOD, established in Plovdiv (Bulgaria), represented by A. Ivanova, 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

Scandia Down LLC, established in Weehawken, New Jersey (United States), represented by G. Farrington, solicitor,

ACTION brought against the decision of the First Board of Appeal of OHIM of 6 September 2012 (Case R 2247/2011-1), relating to invalidity proceedings between Scandia Down LLC and Ted-Invest EOOD,

THE GENERAL COURT (Sixth Chamber),

composed of S. Frimodt Nielsen, President, F. Dehousse and A.M. Collins (Rapporteur), Judges,

Registrar: E. Coulon,

having regard to the application lodged at the Registry of the General Court on 27 November 2012,

having regard to the response of OHIM lodged at the Court Registry on 21 March 2013,

having regard to the response of the intervener lodged at the Court Registry on 19 March 2013,

having regard to the change in the composition of the Chambers of the General Court and the assignment of the case to the Sixth Chamber,

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 Court’s Rules of Procedure, to give a ruling without an oral procedure,

gives the following

Judgment

 Background to the dispute

1        On 14 January 2010, the applicant, Ted-Invest EOOD, filed an application for registration of a Community trade mark at 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        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 include goods in Classes 20 and 24 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 which correspond, for each of those classes, to the following description:

–        Class 20: ‘Furniture, including beds, wardrobes, mattresses; waterbeds; slatted bed frames; divans; seating; canapés; couches; mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics; pillows for sleeping; mattresses’;

–        Class 24: ‘Textiles and textile goods included in this class; bed and table covers; bed sheets; pillow-cases, bed covers, sheets, bed covers, bed sheets, quilted covers, counterpanes; bedclothes’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 2010/053 of 22 March 2010.

5        On 5 July 2010, the sign was registered as a Community trade mark under No 8596975.

6        On 30 September 2010, the intervener, Scandia Down LLC, filed before OHIM a request for a declaration of invalidity of the trade mark at issue in respect of some of the goods referred to in paragraph 3 above.

7        The application for a declaration of invalidity was based on the earlier Community word mark SCANDIA HOME, covering, inter alia, goods in Classes 20 and 24 corresponding, for each of those classes, to the following description:

–        Class 20: ‘Pillows’;

–        Class 24: ‘Bedding products; namely, bed canopies, bed linens, bed sheets, bed spreads, bed throws, bed skirts, blankets, comforters, mattress covers, mattress pads, pillow cases and pillow shams; [down comforters]; towels, bath mats, bath rugs and beach towels’.

8        The grounds for invalidity relied on in support of the application were those referred to in Article 53(1)(a) of Regulation No 207/2009, read in conjunction with Article 8(1)(b) and (2)(a) of that regulation.

9        On 2 September 2011, the Cancellation Division upheld the application for a declaration of invalidity brought by the proprietor of the earlier mark in respect of some of the goods referred to in paragraph 3 above, on the ground that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, between the marks at issue.

10      On 29 October 2011, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.

11      By decision of 6 September 2012 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal. In particular, it took the view, essentially, that the general impression of similarity generated by the marks at issue, together with the identity of certain of the goods covered and the partial similarity to an average degree of the other goods covered, counteracted the presence of a certain dissimilarity which could be found between those marks. In those circumstances, the Board of Appeal confirmed the declaration of invalidity of the contested trade mark as regards the contested goods on the ground that there was a likelihood of confusion between the marks at issue within the meaning of Article 8(1)(b) of Regulation No 207/2009.

 Forms of order sought

12      The applicant claims that the Court should:

–        annul the contested decision in that it declares the trade mark invalid for ‘beds; pillows for sleeping; mattresses’ in Class 20 and for ‘textiles and textile goods included in this class; bed and table covers; bed sheets; pillow-cases, bed covers, sheets, bed covers, bed sheets, quilted covers, counterpanes; bedclothes’ in Class 24;

–        in the alternative, if the Court does not uphold the whole appeal, uphold the appeal and annul the contested decision in connection with ‘beds’ and ‘mattresses’ in Class 20.

13      OHIM and the intervener contend that the Court should:

–        dismiss the action;

–        order the applicant to pay the costs.

 Law

14      The applicant raises a single plea in law alleging breach of Article 8(1)(b) and of Article 53(1)(a) of Regulation No 207/2009. By this plea, it contests the Board of Appeal’s finding that there is a likelihood of confusion between the marks at issue on the part of the relevant public. OHIM and the intervener dispute the applicant’s arguments.

15      Under those articles, a Community trade mark is to be declared invalid, on application by the proprietor of an earlier trade mark, if, because of its identity with or similarity to the earlier trade mark, and the identity or similarity of the goods or services covered by the trade marks, there is a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.

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 that same 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, 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 judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverley Hills (GIORGIO BEVERLEY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

17      In the present case, given the nature of the goods at issue, which are aimed at the general public, the relevant public is, as the Board of Appeal observed in paragraph 25 of the contested decision, composed of the average consumer of the goods, who is reasonably well informed and reasonably observant and circumspect.

18      Furthermore, since the earlier trade mark was registered as a Community trade mark, the Board of Appeal acted correctly in finding, at paragraph 24 of the contested decision, that the relevant territory is that of the European Union. Those considerations, moreover, taken as a whole, have not been disputed by the parties.

 Comparison of the goods

19      According to settled case-law, in order to assess the similarity of the goods or services concerned, all the relevant features of the relationship between those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose and 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).

20      Complementary goods or services are those which are closely connected in the sense that one is indispensable or important for the use of the other, in such a way that consumers may think that the same company is responsible for manufacturing those goods or supplying those services. By definition, goods intended for different publics cannot be complementary (see judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).

21      It is in the light of those considerations that the comparison has to be made between, on the one hand, the ‘beds; pillows for sleeping; mattresses’ covered by the contested trade mark and included in Class 20, together with the ‘textiles and textile goods included in this class; bed and table covers; bed sheets; pillow-cases, bed covers, sheets, bed covers, bed sheets, quilted covers, counterpanes; bedclothes’ covered by the contested trade mark and included in Class 24, and, on the other, the ‘pillows’ covered by the earlier trade mark and included in Class 20, together with the ‘bedding products; namely, bed canopies, bed linens, bed sheets, bed spreads, bed throws, bed skirts, blankets, comforters, mattress covers, mattress pads, pillow cases and pillow shams; [down comforters]; towels, bath mats, bath rugs and beach towels’ covered by the earlier trade mark and included in Class 24.

22      The applicant takes the view that the ‘beds’ and ‘mattresses’ covered by the contested trade mark have only a low degree of similarity to the goods covered by the earlier trade mark.

23      In that regard, it is common ground that ‘beds’, being items of furniture that are generally made of wood or metal, are different in nature from the goods covered by the earlier trade mark, which are of textile origin. Like ‘pillows’, ‘mattresses’ are traditionally covered with a textile case. However, mattresses differ from pillows because of their more complex internal structure. Mattresses also differ from the Class 24 goods covered by the earlier trade mark in that their textile case generally represents only a part of the various components of the product. Accordingly, the applicant is correct when it claims, without being contradicted by OHIM or the intervener, that the ‘beds’ and ‘mattresses’ covered by the contested trade mark are not of the same nature as the goods covered by the earlier trade mark.

24      However, in the light of the case-law referred to in paragraph 19 above, it should be pointed out that the nature of the goods at issue is only one of the relevant factors to be taken into account.

25      As regards the complementary nature of the goods covered by the contested trade mark and the goods covered by the earlier trade mark, it should be pointed out that there is a particularly close connection between them. The use of ‘beds’ and ‘mattresses’ implies the use of one or several other products covered by the earlier trade mark and vice versa (see, to that effect, judgment of 19 June 2014 in Kampol v OHIM — Colmol (Nobel), T‑382/12, EU:T:2014:563, paragraph 41).

26      Furthermore, the goods covered by the contested mark and those covered by the earlier mark are directed at the same consumers, who use them mostly in conjunction and simultaneously. That assessment is confirmed by the finding that the goods at issue are used for the same primary purpose, which is to enhance the rest and sleep of the user.

27      In addition, contrary to what the applicant claims, the goods covered by the contested trade mark and those covered by the earlier trade mark are frequently sold through the same outlets (see, to that effect, Nobel, EU:T:2014:563, paragraph 44). Assuming that they are offered for sale in different sections of the outlet, those sections will frequently be located close to each other given that consumers generally buy a bed, a mattress and certain goods covered by the earlier trade mark at the same time.

28      In those circumstances, the relevant public described in paragraph 17 above is likely to perceive the goods covered by the contested mark and those covered by the earlier mark as belonging to the same family of goods and to regard them as belonging to a general range of goods that have a common commercial origin.

29      In the light of the foregoing, the Board of Appeal did not err in concluding, at paragraph 36 of the contested decision, that the goods at issue in the present case were similar to an average degree.

30      With regard to the other goods covered by the contested mark, namely ‘pillows for sleeping’ and the goods included in Class 24, the Court confirms the Board of Appeal’s assessment, which, moreover, is not contested by the parties.

 Comparison of the signs

31      The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, 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 overall assessment 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 (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).

32      The applicant considers that the signs at issue have a low degree of visual similarity and that there is no, or a very low, degree of aural and conceptual similarity.

33      At the visual level, the Board of Appeal approved the reasoning of the Cancellation Division and correctly found that the signs have a low degree of similarity. That conclusion, moreover, is not called into question by the applicant.

34      At the phonetic level, it must be held that that the signs at issue both contain the element ‘scandia’, consisting of three syllables. The elements ‘home’ and ‘sensi’, which are pronounced differently, consist of one and two syllables respectively. Accordingly, at least half of the verbal elements composing each of the signs at issue are pronounced in a similar way. The fact that the word ‘scandia’ is pronounced first in one case and second in the other reduces, but does not eliminate, the overall similarity displayed by the signs. In those circumstances, it must be held that the signs have an average degree of phonetic similarity.

35      At the conceptual level, it must be noted that the element ‘scandia’, which is common to the signs at issue, primarily alludes to Scandinavia for a substantial portion of the relevant public. That conclusion is not, moreover, contested by the applicant. The element ‘home’, an English word which means ‘house’ or ‘at home’, conveys the idea of comfort in the same way as the element ‘sensi’, which, although it does not have an inherent meaning, is an abbreviation of the adjective sensitive in several European languages. Taken as a whole, the signs at issue are therefore likely to evoke Scandinavian comfort.

36      The fact, invoked by the applicant, that the word ‘scandia’ is used as an adjective in the sign SCANDIA HOME and as a noun in the sign sensi scandia cannot affect that finding. Such a grammatical detail is not relevant in the present case in so far as the similarity of the signs at issue must be based, according to the case-law cited in paragraph 31 above, on the overall impression which those signs produce. In those circumstances, the signs at issue must be regarded as being conceptually similar.

 The likelihood of confusion

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

38      The applicant takes the view that the element ‘home’, which means ‘place where one lives’, is the main element of the earlier trade mark SCANDIA HOME. The element ‘scandia’, it claims, has a low distinctive character because it is commonly used, but also because it designates a geographical area, namely Scandinavia, with the result that it cannot be decisive for the assessment of the similarities of the trade marks at issue. In those circumstances, the earlier trade mark, SCANDIA HOME, considered as a whole, has, it is argued, only a low distinctive character. The applicant also argues that it would not be legitimate for a company to claims rights, for goods in Classes 20 and 24, over a name designating a geographical area.

39      As regards the English word ‘home’, it should be noted that a substantial section of the relevant public will understand its meaning, namely ‘house’ or ‘place where one lives’. In that regard, it is probable that that relevant public will associate that word with the contested goods, which are undeniably goods intended for indoors. Consequently, the word ‘home’ has a low distinctive character.

40      In those circumstances, the word element ‘scandia’ is more capable of attracting the attention of the relevant public. The Board of Appeal’s finding that that element is likely to be perceived by the relevant public as being the dominant element of the signs at issue must therefore be upheld. In this regard, that finding cannot be brought into question by the fact that the word ‘scandia’ is used as an adjective that qualifies the word ‘home’ in the earlier mark.

41      With regard to the applicant’s argument that the term ‘scandia’ is commonly used, it must be held that the documents supplied by the applicant to substantiate that argument refer mainly to the word ‘scandinavia’ or the adjective ‘scandinavian’ in English, or ‘skandinavisch’ in German. While those documents are evidence of the common use of the word ‘scandinavia’ in the field of design and architecture, the mere reproduction of a book cover entitled ‘Scandia’ does not, in itself, prove that that term is commonly used.

42      In this regard, the term ‘scandia’ cannot be regarded as a synonym for Scandinavia, as the applicant suggests. The term ‘scandia’ does indeed refer to Scandinavia. However, as the Board of Appeal correctly held in paragraph 46 of the contested decision, it is an ‘ancient and poetic name’. The parties do not, moreover, challenge that assessment. The applicant’s argument must for that reason be rejected.

43      With regard to the applicant’s argument that the term ‘scandia’ designates a geographical area, it should be noted that, on the part of the relevant public, that word conveys a far more evocative representation of that geographical area. In the present case, it will be perceived by the relevant public more as a simple reference to a style of goods than as a reference to their geographical origin. Therefore, the term ‘scandia’ must be regarded, in the present case, as having normal distinctiveness.

44      The applicant also argues that the figurative element of the contested trade mark is highly distinctive. However, it suffices to note that that argument is irrelevant for the purposes of assessing the inherent distinctiveness of the earlier mark.

45      In the light of the foregoing, it must be concluded that the earlier mark has normal inherent distinctiveness.

46      In any event, even if it is assumed that the earlier mark has only a weak distinctive character, it must be noted that this does not preclude a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in such an assessment. Thus, even in a case involving an earlier mark of low 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 (see judgment of 13 December 2007 in Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, ECR, EU:T:2007:387, paragraph 70 and the case-law cited).

47      So far as concerns the applicant’s assertion that the visual perception of the trade mark is dominant, this is in no way substantiated. Furthermore, the applicant is inconsistent when it suggests, on the one hand, that the goods in question are sold in supermarkets while asserting, on the other hand, that those goods are sold in specialised shops.

48      With regard to the applicant’s argument that recognition of a likelihood of confusion between the marks at issue would confer on the intervener exclusivity over the geographical area for the goods in Classes 20 and 24, this is based on the false twofold premiss that the term ‘scandia’ is a synonym for Scandinavia and that it refers solely to the geographical area of Scandinavia. It must for that reason be rejected.

49      It follows from the foregoing that the goods are in part identical and in part similar to an average degree. Moreover, the signs at issue have a low degree of visual similarity, an average degree of aural similarity and are conceptually similar. Furthermore, it has been established that, considered as a whole, the earlier mark has normal distinctiveness. In those circumstances, a confusion between the marks at issue cannot be ruled out, in view of the fact that the consumer has only rarely 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 retained in his memory (judgment of 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, ECR, EU:C:1999:323, paragraph 26).

50      It must therefore be concluded that the difference between those signs is insufficient to exclude all likelihood of confusion between the trade marks on the part of the public.

51      As the single plea raised by the applicant is unfounded, the action must be dismissed in its entirety.

 Costs

52      Under Article 87(2) 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.

53      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 (Sixth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Ted-Invest EOOD to pay the costs.

Frimodt Nielsen

Dehousse

Collins

Delivered in open court in Luxembourg on 25 September 2014.

[Signatures]