JUDGMENT OF THE GENERAL COURT (Fourth Chamber)

4 March 2015(*)

(Community trade mark — Opposition proceedings — Application for Community word mark PRANAYUR — Earlier Community word mark AYUR and earlier Community figurative marks Ayur, Ayur Naturals Herbals and Aanb — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑543/13,

Three-N-Products Private Ltd, established in New Delhi (India), represented by N. Colombo, lawyer,

applicant,

v

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

defendant,

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

Munindra Holding BV, established in Lelystad (Netherlands),

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 25 July 2013 (Case R 638/2012-4) relating to opposition proceedings between Three-N-Products Private Ltd and Munindra Holding BV,

THE GENERAL COURT (Fourth Chamber),

composed of M. Prek (Rapporteur), President, I. Labucka and V. Kreuschitz, Judges,

Registrar: J. Weychert, Administrator,

having regard to the application lodged at the Registry of the General Court on 4 October 2013,

having regard to the response lodged at the Court Registry on 31 January 2014,

having regard to the Court’s written question to the parties and their responses to that question lodged at the Court Registry on 30 September 2014,

further to the hearing on 15 October 2014,

gives the following

Judgment

 Background to the dispute

1        On 19 August 2008, Munindra Holding BV 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 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2        The trade mark in respect of which registration was sought is the word sign PRANAYUR.

3        The goods for which registration was sought fall within Classes 5 and 30 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond, for each of those classes, to the following description:

–        Class 5: ‘Herbal preparations (medicinal); mineral food supplements; therapeutic herbs; medicinal oils; foods supplements’;

–        Class 30: ‘Herbal preparations (non-medicinal)’.

4        The Community trade mark application was published in Community Trade Marks Bulletin No 046/2008 of 17 November 2008.

5        On 3 February 2009, the applicant, Three-N-Products Private Ltd, filed a notice of opposition, under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6        The opposition was based on the following earlier marks:

–        the Community word mark AYUR, registered on 24 October 2008 under number 5 429 469, covering, inter alia, the goods in Class 5 corresponding to the following description: ‘Herbal preparations for skin treatment, weight control, weight loss and treatment of diabetes; vitamin and mineral preparations and substances; health care products; vitamin preparations, mineral preparations for skin treatment, weight loss and treatment of diabetes’;

–        the Community figurative mark, reproduced below, registered on 20 November 2006 under number 2 996 098, covering goods in Classes 5 and 30 corresponding respectively for each of those classes to the following descriptions:

–        ‘Herbal preparations; dietetic preparations and substances; vitamin and mineral preparations and substances; health care products; vitamin preparations, mineral preparations’;

–        ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee substitutes; confectionery, ices; honey; food additives, food supplements; teas; vitamin and mineral supplements; nutritional supplements; nutritional supplements containing extracts of plants and herbs; herbal teas’:

–        the Community figurative mark, reproduced below, registered on 26 March 2008 under number 5 809 314, for various goods and services:

–        the Community figurative mark, reproduced below, registered on 13 March 2008 under number 5 809 587 for various goods and services:

7        The grounds relied on in support of the opposition were those referred to in Article 8(1)(a) and (b) of Regulation No 40/94 (now Article 8(1)(a) and (b) of Regulation No 207/2009).

8        On 30 January 2012, the Opposition Division rejected the opposition.

9        On 28 March 2012, the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

10      By decision of 25 July 2013 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. In particular, it found that, although the goods for which the earlier word mark is protected are identical or similar to those covered by the Community trade mark application, the visual similarity of the word elements ‘ayur’ and ‘pranayur’ is no more than average, or even low, their phonetic similarity is low and any conceptual comparison is irrelevant, in so far as only an insignificant part of the relevant public will understand either sign as a reference to the Sanskrit word ‘ayurveda’. Accordingly, any likelihood of confusion between the word marks was excluded, despite the identical or similar nature of the goods. With regard to the earlier figurative marks, the Board of Appeal held that their similarity to the mark applied for was even lower because of the additional figurative and word elements in those marks.

11      In the meantime, on 27 February 2009, the intervener brought an application for a declaration of invalidity of the earlier word mark under Article 52(1)(a) of Regulation No 40/94 (now Article 53(1)(a) of Regulation No 207/2009), in conjunction with Article 8(1)(b) of Regulation No 40/94. On 9 September 2011, the Cancellation Division of OHIM declared that mark invalid. On 23 November 2012, the Fourth Board of Appeal of OHIM dismissed the appeal brought against the Cancellation Division’s decision. By judgment of 7 November 2013, Three-N-Products v OHIM — Munindra (AYUR) (T‑63/13, EU:T:2013:583), the General Court dismissed the action for annulment brought by the applicant against the decision of the Board of Appeal. By order of 2 July 2014 in Three-N-Products v OHIM (C‑22/14 P, EU:C:2014:2078) the Court of Justice upheld that judgment on appeal.

 Forms of order sought

12      The applicant claims that the Court should:

–        annul the contested decision in its entirety;

–        refuse registration of the mark applied for;

–        order OHIM and the other party to the proceedings before OHIM to pay the costs.

13      OHIM contends that the Court should:

–        dismiss the action in its entirety;

–        order the applicant to pay the costs.

 Arguments of the parties

14      In support of its action, the applicant relies on two pleas in law. The first alleges infringement of Article 8(1)(b) of Regulation No 207/2009, in that OHIM did not correctly assess the likelihood of confusion between the mark applied for and the earlier word mark. The second alleges infringement of Article 8(1)(b) of Regulation No 207/2009, in that OHIM did not analyse the alleged likelihood of confusion between the mark applied for and the earlier figurative marks referred to in paragraph 6 above.

 The first plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, in that OHIM did not correctly assess the likelihood of confusion between the mark applied for and the earlier word mark

15      It should be noted that the earlier word mark was cancelled by OHIM and that that cancellation was confirmed by the General Court in its judgment in AYUR, paragraph 11 above (EU:T:2013:583) and, on appeal, by the Court in its order in Three-N-Products v OHIM, paragraph 11 above (EU:C:2014:2078).

16      Under Article 55(2) of Regulation No 207/2009, the Community trade mark is to be deemed not to have had, as from the outset, the effects specified in that regulation, to the extent that the trade mark has been declared invalid. It follows that the earlier word mark must be deemed not to have produced its effects and, therefore, not to have been able to form the basis of an opposition against the mark applied for.

17      Accordingly, there is no longer any need to adjudicate on the plea in law concerning the risk of confusion with that mark.

 The second plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, in that OHIM did not analyse the alleged likelihood of confusion between the mark applied for and the earlier figurative marks

18      The applicant alleges that the Board of Appeal based its analysis solely on the comparison of the mark applied for with the earlier word mark, and did not carry out any detailed analysis of the likelihood of confusion with the earlier figurative marks. In the second place, it claims, in essence, that the Board of Appeal should have found that there was a likelihood of confusion between the mark applied for and the figurative mark Ayur, registered under number 2 996 098, composed of the word element ‘ayur’ and figurative elements representing an ellipse and a stylised plant.

19      First, as regards the criticism of the failure to examine the likelihood of confusion between the mark applied for and the earlier figurative marks, it should be noted that, as OHIM correctly points out, the Board of Appeal did not fail to analyse the existence of a likelihood of confusion between those marks, as is clear from paragraphs 35 to 39 of the contested decision.

20      Indeed, the Board of Appeal noted that the earlier figurative marks included the word element ‘ayur’ as well as additional elements of differentiation. It concluded that there was no likelihood of confusion between each of the earlier figurative marks and the mark applied for, account being taken of the fact that it had already concluded that there was no such likelihood of confusion between the earlier word mark and the mark applied for on the basis of the word element forming the earlier mark and contained in the applicant’s figurative marks.

21      Second, as regards the claim alleging the existence of a likelihood of confusion with the earlier figurative mark Ayur, registered under number 2 996 098, it should be recalled that, under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to 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.

22      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 case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including 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).

23      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks 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).

 The relevant public

24      According to case-law, 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 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).

25      As the figurative mark Ayur, registered under number 2 996 098, is a Community trade mark, it is the territory of the European Union which is relevant in the present case, as noted, in essence, by the Board of Appeal, without that being disputed by the applicant. In addition, it has already been held, in respect of a word mark designating the same goods and services as those covered by the figurative mark Ayur, firstly, that the goods and services at issue are aimed at both the general end consumer and the professional public in the field of beauty and health care products and, secondly, that as none of the goods at issue are a pharmaceutical product used only on medical prescription, the degree of attention of the relevant public will be average (see, to that effect, judgment of 10 November 2011 in Three-N-Products Private v OHIM — Shah (AYUURI NATURAL), T‑313/10, EU:T:2011:653, paragraph 27).

 Comparison of the goods

26      The parties agree that the goods at issue are partly identical and partly similar.

 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 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 global 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).

28      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 27 above, EU:C:2007:333, 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 (judgments in OHIM v Shaker, EU:C:2007:333, paragraph 42, and of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public keep in their minds, so that all the other components are negligible in the overall impression created by that mark (judgment in Nestlé v OHIM, EU:C:2007:539, paragraph 43).

29      The applicant submits, in essence, that the marks at issue are similar visually and phonetically having regard to the Indian origin of the word element ‘ayur’ which is common to the earlier mark and the mark applied for. Conceptually, account being taken of the common Indian origin, understood by the average consumer, the two marks can be considered identical or highly similar. If it were considered that the two word elements of the marks at issue have, in contrast, no precise meaning for the average consumer, and are therefore fanciful words, then the earlier mark would have a strong distinctive character, warranting maximum protection. In addition, the word ‘ayur’ is not a negligible element in the mark applied for, which may be disregarded in the assessment of the similarity between the signs even if it is affixed to an element which is dominant (as the initial element) as part of the composite mark. Consequently, the average to low degree of visual similarity, the average degree of phonetic similarity and the high or average degree of conceptual similarity give rise to an overall likelihood of confusion between the marks.

30      OHIM takes issue with the applicant’s arguments.

31      Visually, it is appropriate to note that the applicant does not dispute the finding of the Board of Appeal that the word elements ‘ayur’ and ‘pranayur’ are only averagely or weakly similar, in so far as they begin with different letters and the first consists of four letters and the second of eight letters, the four identical letters, corresponding to the earlier mark, being placed in the same order at the end of the mark applied for.

32      Moreover, that conclusion is consistent with the case-law, according to which the important factor in assessing the visual similarity of two word marks is rather the presence in each of them, of several letters in the same order (judgment of 25 March 2009 in Kaul v OHIM — Bayer (ARCOL), T‑402/07, ECR, EU:T:2009:85, paragraph 83). However, when the group of identical letters comes at the end of those marks and is preceded by completely different groups of letters, the Board of Appeal may, correctly, conclude that such identity is not capable of calling into question the lack of visual similarity of those marks, taken as a whole (see, to that effect, judgment in ARCOL, EU:T:2009:85, paragraph 84).

33      Furthermore, the presence of additional figurative elements consisting of a stylised plant and an ellipse in the earlier figurative mark serves to differentiate it further. The overall visual impression of the marks at issue is therefore very different and the degree of visual similarity can be defined as very low. Such factors must be taken into account, although they may be considered secondary (see, to that effect, AYUURI NATURAL, paragraph 25 above, EU:T:2011:653, paragraph 42), to the extent that they are not negligible in the overall impression of that mark (see, to that effect, OHIM v Shaker, paragraph 27 above, EU:C:2007:333, paragraph 23).

34      It follows from the foregoing that, despite the existence of a common word element in the marks at issue, the presence of another word element which is at least equally important as that common element, the different lengths of the signs and the difference in the initial letters and the presence in the earlier figurative mark of additional figurative elements gives rise to an overall visual impression of the marks at issue which is different.

35      Phonetically, it is common ground that the earlier mark can be pronounced only in one way. In contrast, the mark applied for may be pronounced in different ways. However, it is to be noted that the assessment made by OHIM’s Board of Appeal must be confirmed in that it is likely that, in the absence of understanding by a significant part of the relevant public of the words ‘pran’ and ‘ayur’, the pronunciation of the mark applied for will follow the division into syllables. In both cases, a single syllable is the same. Therefore the Board of Appeal was right to find a low degree of phonetic similarity between the marks at issue, because only the last syllable of the two signs is identical. In any event, it should be noted that the presence of an additional word element at the beginning of the sign applied for can only help to also differentiate the marks at issue phonetically.

36      Conceptually, regarding the comparison of the signs at issue, the Court has already had occasion to point out that the relevant public will not easily make the connection between the element ‘ayur’ and the word ‘ayurveda’ designating a form of traditional Hindu medicine (judgment in AYUURI NATURAL, paragraph 25 above, EU:T:2011:653, paragraph 47) and that, although a conceptual comparison could be made by a part of the relevant public, made up of those most specialised in matters of alternative medicine, no conceptual comparison appears possible for the general public (see, to that effect, AYUURI NATURAL, EU:T:2011:653, paragraph 53).

37      The two marks are thus fanciful terms not referring to any concept known by the most significant part of the relevant public. Therefore the Board of Appeal was correct to conclude that it was impossible to make a conceptual comparison.

 The likelihood of confusion

38      In view of the above, with regard to the comparison of the signs, they are different visually, slightly similar phonetically and no conceptual comparison is possible between them. The conclusion must therefore be that the elements of differentiation outweigh the common word element ‘ayur’ to such an extent that the overall impression of the two marks is different following the case-law cited in paragraph 28 above and that, therefore, the signs are different.

39      It follows that one of the cumulative conditions required by the case-law, cited in paragraph 23 above, is not satisfied. Accordingly, without there being any need to rule on the distinctive character of the earlier mark, it must be concluded that, despite the partial identity of the goods at issue, there is no likelihood of confusion between the figurative mark Ayur and the mark applied for.

40      Third, to the extent that the applicant’s pleadings could be understood as supporting the existence of a likelihood of confusion between the mark applied for and the other earlier figurative marks, the second plea in law must be declared inadmissible under Article 44(1)(c) of the Rules of Procedure of the General Court, since the applicant does not present any legal analysis regarding the existence of a likelihood of confusion with those other marks.

41      Accordingly, without it being necessary to adjudicate on the applicant’s second head of claim concerning the request to refuse registration of the mark applied for, it is appropriate to reject the second plea in law and the action in its entirety as no infringement of Article 8(1)(b) of Regulation No 207/2009 has been established.

 Costs

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

On those grounds,

THE GENERAL COURT (Fourth Chamber)

hereby:

1.      Dismisses the action;

2.      Orders Three-N-Products Private Ltd to pay the costs.

Prek

Labucka

Kreuschitz

Delivered in open court in Luxembourg on 4 March 2015.

[Signatures]