COR Sitzm�bel Helmut Lubke v OHMI - El Corte Ingles (COR) (Intellectual property) [2011] EUECJ T-214/09 (20 October 2011)

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(Community trade mark – Opposition proceedings – Application for territorial extension of the protection of an international registration – Word mark COR – Earlier Community word mark CADENACOR –Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009) – Similarity of the signs – Similarity of the goods)

COR Sitzmöbel Helmut Lübke GmbH & Co. KG, established in Rheda-�Wiedenbrück (Germany), represented by Y.-G. von Amsberg and A.-�S. Loesenbeck, lawyers,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-�Monguiral and G. Schneider, acting as Agents,

El Corte Inglés, SA, established in Madrid (Spain), represented by J.L. Rivas Zurdo, M.E. López Camba and E. Seijo Veiguela, lawyers,

1 COR Sitzmöbel Helmut Lübke GmbH & Co. KG, the applicant, is the holder of international registration No 839721 of the word mark COR, registered by the International Bureau of the World Intellectual Property Organisation (‘the International Bureau’) with effect from 28 October 2004.

2 The goods in respect of which the trade mark is registered are in Classes 20 and 27 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

3 The applicant submitted to the International Bureau an application for territorial extension of that trade mark to the European Community pursuant to the Madrid Protocol, which was notified to the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) on 3 February 2005.

4 The international registration was published in Community Trade Marks Bulletin No 18/05 of 2 May 2005.

5 On 23 December 2005, El Corte Inglés, SA, the intervener, filed a notice of opposition to the international registration under Articles 42 and 151 of Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (now Articles 41 and 156 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)), in respect of all the goods referred to in paragraph 2 above.

6 The opposition was based, inter alia, on Community word mark No 2362598 CADENACOR, for which the registration application had been filed on 31 August 2001 and which was registered on 29 November 2007 (‘the earlier trademark’ or ‘the mark CADENACOR’) for the following goods: ‘Furniture, 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’ (Class 20).

7 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

8 By decision of 18 January 2008, the Opposition Division upheld the opposition in its entirety. It considered that, given the similarity, or identity, of the various goods at issue as well as the similarity between the two signs at issue, the Spanish public would perceive the contested mark as the house mark of the intervener, the proprietor of the earlier mark, and that there was therefore a likelihood of confusion between the two signs, which included the risk of association, within the meaning of Article 8(1)(b) of Regulation No 40/94, at least in parts of Community territory.

9 On 15 February 2008 the applicant filed an appeal with OHIM pursuant to Articles 57 to 62 and 151 of Regulation No 40/94 (now Articles 58 to 64 and 156 of Regulation No 207/2009) against the decision of the Opposition Division.

10 By decision of 4 March 2009 (‘the contested decision’), the Second Board of Appeal dismissed the appeal and upheld the Opposition Division’s decision, on the basis that there was a likelihood of confusion between the two signs at issue. Its decision was based on a finding, first, that the goods covered by those signs were identical in relation to furniture and similar in relation to carpets. It stated, in particular, that carpets shared the same intended purpose as furniture and were aesthetically complementary, as they were matched to make the overall appearance of the house harmonious and were often sold in the same specialised shops. Second, it also held that the signs were visually and phonetically similar, since the Spanish public would perceive the earlier sign as being composed of two elements, ‘cadena’ and ‘cor’, with ‘cor’, as a fanciful element, being the only distinctive element of that trade mark and identical to the international registration. According to the Board of Appeal, the descriptive reference to the distribution system in which the goods were sold (‘cadena’) could not put the signs conceptually apart.

13 OHIM contends that Annex K 2 to the application, consisting of a list of trade marks incorporating the word ‘cadena’, is a new document since it was not produced during the administrative proceedings before OHIM and that that document is therefore inadmissible.

14 According to settled case-law, the purpose of actions brought before the General Court is to review the legality of decisions of the Boards of Appeal within the meaning of Article 65 of Regulation No 207/2009, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. Facts which are pleaded before the Court without having previously been produced before the adjudicating bodies of OHIM can affect the legality of such a decision only if OHIM should have taken them into account of its own motion (Case T-�115/03 Samar v OHIM – Grotto (GAS STATION) [2004] ECR II-�2939, paragraph 13, and Case T-�346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II-�4891, paragraph 19).

15 In the present case, as Annex K 2 to the application was not produced during the administrative proceedings before OHIM, it must be held to be inadmissible, and there is no need to assess its probative value or to hear further from the parties (see ARTHUR ET FELICIE, paragraph 19 and the case-law cited).

16 Finally, it should be pointed out that such rules on admissibility also apply to OHIM and to interveners. The principle of equality of arms requires that applicants and interveners before the General Court have the same means at their disposal (Case T-57/03 SPAG v OHIM – Dann and Backer (HOOLIGAN) [2005] ECR II-�287, paragraph 23). Therefore, the request by the intervener to produce new documents during the hearing must also be held to be inadmissible.

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

18 Under the terms of that provision, 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, the 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.

19 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. Under that 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 concerned 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 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).

20 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).

21 Where the protection of the earlier trade mark extends to the entirety of the Community, it is necessary to take into account the perception of the marks in dispute by the consumer of the goods at issue in that territory. However, it should be noted that, in order for registration of a Community trade mark to be refused, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists only in part of the Community (see, to that effect, Joined Cases T-�81/03, T-�82/03 and T-�103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II-�5409, paragraph 76 and the case-law cited).

22 In the present case, the applicant challenges the validity of the contested decision with regard, first, to the similarity of the goods covered by the signs at issue and, second, to the visual, phonetic and conceptual comparison of those signs.

23 The applicant does not dispute that, having regard to the examination of the likelihood of confusion, the relevant public is the Spanish public, or that, in accordance with the case-law regarding the nature of the goods at issue, its level of attention when buying those goods must, as a general rule, be taken to be higher than its normal level of attention (judgment of 16 January 2008 in Case T-�112/06 Inter-Ikea v OHIM – Waibel (idea), not published in the ECR, paragraph 37).

24 The Board of Appeal found at paragraph 19 of the contested decision, taking up the reasoning of the Opposition Division, that the goods covered by the signs at issue were identical with regard to furniture and similar with regard to carpets and furniture, since it considered that they had the same intended purpose and were aesthetically complementary. It considered that they could be matched to make the overall appearance of the house harmonious and they were often sold in the same specialised shops.

25 The applicant does not dispute the fact that the various Class 20 goods are identical. Nevertheless, it considers that there is no similarity between furniture and carpets since, first, furniture and carpets come from different producers and, second, consumers are not accustomed to acquiring such goods from the same producer or from associated undertakings. It submits, moreover, that carpets and furniture can be purchased and used independently of one another.

26 According to settled case-law, in order to assess the similarity of goods, all the relevant features of their relationship with each other should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see Case T-443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II-�2579, paragraph 37 and the case-law cited).

27 Complementary goods or services are those which are closely connected in the sense that one is indispensable or important for using the other, so that consumers may think that the same company is responsible for manufacturing these goods or supplying these services. By definition, goods and services intended for different publics cannot be complementary (see easyHotel, paragraphs 57 and 58 and the case-�law cited).

28 It is in the light of those considerations that the Court must examine whether the goods at issue are similar.

29 In the present case, it should be pointed out that both furniture and carpets, among other elements, form part of the fixtures and fittings of a dwelling. The furniture is intended to be used in the home or serves to decorate it and the carpets serve to cover the floors, in order to insulate them against the cold and decorate them. As the Board of Appeal pointed out at paragraph 19 of the contested decision, those goods, as furnishings, essentially have the same purpose, since they are intended to fit out a home. Accordingly, it should be considered that those goods have the same intended purpose.

30 That fact is the basis of the analysis according to which furniture and carpets are often used in the same way, namely, arranged in a home with the aim of fitting it out and decorating it. Accordingly, the use of those goods must also be regarded as being the same.

31 Moreover, the Board of Appeal indicated, at paragraph 19 of the contested decision, taking up the reasoning of the Opposition Division, that there was some degree of complementarity between those goods since the average consumer matched them by material and appearance to make the overall appearance of the house harmonious.

32 In this regard, it should be noted that, according to the case-law, aesthetic complementarity between goods may give rise to a degree of similarity within the meaning of Article 8(1)(b) of Regulation No 207/2009. Such aesthetic complementarity must involve a true aesthetic necessity, in the sense that one product is indispensable or important for the use of the other and consumers consider it ordinary and natural to use those products together (Case T-169/03 Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI) [2005] ECR II-�685, paragraphs 60 and 62, and Case T-150/04 Mülhens v OHIM – Minoronzoni (TOSCA BLU) [2007] ECR II-�2353, paragraph 36). That aesthetic complementarity is subjective and is determined by the habits and preferences of consumers, to which producers’ marketing strategies or even simple fashion trends may give rise (SISSI ROSSI, paragraph 61).

33 In the present case, in so far as furniture and carpets are both used for the purpose of decorating a home, they have a common aesthetic function that leads consumers, as a general rule, to use them together and to match them with each other, in order to create a harmonious atmosphere. Moreover, carpets cannot be used by themselves in the fitting-out and decoration of a house. Thus, even if, in functional terms, it is possible to use the carpets and the furniture separately, in aesthetic terms the use of furniture in the fitting-out and decoration of a house is not separate from the use of carpets. Accordingly, there is an aesthetically complementary connection between those goods (PiraÑAM diseño original Juan Bolaños, paragraphs 49 and 50).

34 However, the existence of aesthetic complementarity between the goods at issue of the kind that is referred to in the previous paragraph is not enough to establish similarity between those goods. For that, the consumers must consider it usual that the goods are sold under the same trade mark, which normally implies that a large number of the producers or distributors of the goods are the same (SISSI ROSSI, paragraph 63, and TOSCA BLU, paragraph 37).

35 In the present case, it is common knowledge that carpets and furniture are often sold together in shops specialising in interior decoration, which offer coordinated goods that enable a home to be fitted out in such a way as to obtain overall harmony. That fact is likely to facilitate the perception by the relevant consumer of the close connections between them and strengthen the impression that the same undertaking is responsible for their production (PiraÑAM diseño original Juan Bolaños, paragraph 50). Therefore, in accordance with the case-law cited in the previous paragraph, consumers will consider it usual that furniture and carpets are sold under the same trade mark, which, as OHIM has rightly stated, may even correspond to the commercial name of the distribution company.

36 Contrary to the applicant’s arguments, the fact that the manufacturers of carpets and of furniture are different is irrelevant when determining the similarity of the goods covered by the signs at issue. As is apparent from the case-law, what is important is not whether an item of furniture and a carpet are manufactured by the same operators, but whether consumers consider it usual that furniture and carpets are sold under the same trade mark, which normally implies that a large number of the producers or distributors of the goods are the same (TOSCA BLU, paragraph 37, and SISSI ROSSI, paragraph 63).

37 As is apparent from paragraphs 29 and 30 above, carpets and furniture have the same intended purpose and are used in the same way. Also, as is clear from paragraphs 33 and 35 above, they are complementary in aesthetic terms and are often sold in the same shops. Consequently, the Board of Appeal rightly held, at paragraphs 19 and 33 of the contested decision, that there was a similarity between carpets, on the one hand, and furniture, on the other.

38 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarities of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of 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 Case C-�334/05 P OHIM v Shaker [2007] ECR I-�4529, paragraph 35 and the case-law cited).

39 According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (Case T-6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 30, and judgment of 10 September 2008 in Case T-325/06 Boston Scientific v OHIM – Terumo (CAPIO), not published in the ECR, paragraph 89).

40 Whether there is similarity between the mark COR and the mark CADENACOR must be examined in the light of those considerations.

41 In the present case, the Board of Appeal considered that the signs at issue were visually and phonetically similar and that the coincidence of the sign COR with the sole distinctive element of the mark CADENACOR made up for the difference connected with the presence of the element ‘cadena’ in the earlier mark.

42 On the other hand, the applicant considers that comparison of the two signs reveals visual, phonetic and conceptual differences that are too great for there to be a likelihood of confusion between them and that, by excluding the first three syllables of the earlier mark from the comparison, on the ground that Spanish consumers would regard only the last syllable as distinctive, the Board of Appeal wrongly concluded that there was a likelihood of confusion.

43 First, it should be noted that the marks at issue have a common element, namely the word element ‘cor’. Nevertheless, in the case of the earlier mark, it is preceded by the word element ‘cadena’, with which it forms a single word, ‘cadenacor’.

44 In this regard the Board of Appeal found, at paragraph 24 of the contested decision, that the Spanish public would perceive the earlier sign as being composed of two elements, ‘cadena’ and ‘cor’, together meaning ‘COR chain [of shops]’.

45 Nevertheless, according to the applicant, the originality and unmistakeability of the earlier mark arise only as a result of the combination of all its components. It submits that the analysis made by the Board of Appeal does not correspond to the probable perception of the Spanish public, which is not accustomed to the structure of an undertaking’s network being the principal component of a trade mark.

46 It is true that, according to the case-law cited in paragraph 38 above, the global assessment of the likelihood of confusion must be based on the overall impression given by the signs at issue. However, it must also be pointed out that, according to the case-law, the average consumer, perceiving a word sign, will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (Case T-�356/02 Vitakraft-Werke Wührmann v OHIM – Krafft (VITAKRAFT) [2004] ECR II-�3445, paragraph 51; Case T-�256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II-�449, paragraph 57; and judgment of 12 November 2008 in Case T-�281/07 ecoblue v OHIM – Banco Bilbao Vizcaya Argentaria (Ecoblue), not published in the ECR, paragraph 30).

47 In the present case, the earlier mark will be perceived by a Spanish-speaking consumer as the juxtaposition, in the correct grammatical order, of the word ‘cadena’, meaning ‘chain’, and the word element ‘cor’, which is a fanciful element without any meaning in Spanish. Accordingly, the Board of Appeal rightly found, at paragraph 24 of the contested decision, that the consumer would immediately identify the word elements ‘cadena’ and ‘cor’ as meaning ‘COR chain [of shops]’.

48 The applicant disputes that conclusion, claiming that RESPICUR is not applicable to the present case because, unlike the signs examined in that judgment, the mark CADENACOR is not allusive and there is no close connection with the goods concerned.

49 That argument cannot rebut the above conclusion. As is apparent from VITRAKRAFT, RESPICUR and Ecoblue, the existence of a connection, more or less close, between the sign and the goods designated by it is irrelevant. For consumers to have the propensity to break down the signs into several word elements, it is sufficient that those signs suggest a concrete meaning or resemble words known to them, irrespective of the connection between them and the goods at issue.

50 In the present case, as is apparent from the dictionary of the Spanish language of the Real Academia Española (Spanish Royal Academy), the word ‘cadena’ exists in Spanish and, among other meanings, denotes a ‘set of establishments, facilities or buildings of the same kind or function, organised in a system and owned by a single undertaking or subject to the same management’. Accordingly, the relevant public will easily identify the word ‘cadena’ in the earlier mark and will associate it, in a commercial context, with a distribution system.

51 Since it is established that the relevant public will perceive the earlier mark as being composed of the word elements ‘cadena’ and ‘cor’, consideration should be given to the distinctive and dominant character of those elements so that a comparison of the two signs at issue can then be made.

52 The Board of Appeal found, at paragraph 25 of the contested decision, that the element ‘cor’ was a fanciful term and, therefore, the more distinctive element of the earlier mark, whereas the word element ‘cadena’ was a reference to a commercial retail distribution system, commonly found in the field of home furnishings. It therefore held, at paragraphs 29 and 30 of the contested decision, that this element was a descriptive reference to a distribution system.

53 On the other hand, the applicant considers that the word element ‘cadena’ is distinctive, since no meaning of the word ‘cadena’ describes characteristics of furniture and there is no connection between the goods concerned and the earlier mark. Moreover, it considers that, as it is composed of three syllables and is placed at the beginning of the sign, the element ‘cadena’ is the dominant element of the earlier mark.

54 It is apparent from the case-law that, as a general rule, a fanciful word is more likely to draw the attention of the consumer (VITAKRAFT, paragraph 52, and MATRATZEN, paragraph 43). This applies in the current case to the word element ‘cor’ which, as indicated in paragraph 47 above, has no meaning in the Spanish language. On the other hand, a word such as ‘cadena’, which is used, as indicated in paragraph 50 above, in the course of trade to designate a standard form of distribution in the home furnishings sector, can only have a weak distinctive character in the eyes of the average consumer of furnishing and decoration products (see, to that effect, the judgment of 25 March 2009 in Case T-21/07 L’Oréal v OHIM – Spa Monopole (SPALINE), not published in the ECR, paragraph 32).

55 The argument of the applicant that no meaning of the word ‘cadena’ describes characteristics of furniture is inapposite. It is clear from the previous paragraph that the weak distinctive character of the element ‘cadena’ is due to the fact that it designates a commercial retail distribution system, which, as the Board of Appeal found, is often used to market items of home furnishing (see paragraph 52 above).

56 Furthermore, contrary to what the applicant seems to be claiming, the fact that the word ‘cadena’ is placed at the beginning of the earlier mark cannot confer on it greater importance than the element ‘cor’ or a dominant character in the earlier mark. While it is true that the consumer normally attaches more importance to the first part of words (Joined Cases T-183/02 and T-184/02 El Corte Inglés v OHIM – González Cabello and Iberia Línéas Aéreas de España (MUNDICOR) [2004] ECR II-�965, paragraph 81), that consideration cannot apply in every case (judgment of 16 May 2007 in Case T-158/05 Trek Bicycle v OHIM – Audi (ALLTREK), not published in the ECR, paragraph 70, and Ecoblue, paragraph 32). The applicant’s argument relating to the particular importance attached by the consumer to the beginning of a sign is therefore not conclusive. It should also be noted that, according to the case-law, other factors can play an important role in determining whether an element of the sign is dominant, in particular, the everyday character of the element in question or its descriptive nature (Case T-�117/02 Grupo El Prado Cervera v OHIM – Héritiers Debuschewitz (CHUFAFIT) [2004] ECR II-�2073, paragraph 53, and ALLTREK, paragraphs 70 to 72).

57 In the present case, as indicated in paragraph 50 above, the word element ‘cadena’ commonly designates a commercial distribution system and, even placed at the beginning of the mark, it would not succeed in drawing the attention of the relevant public and would not dominate the overall impression made by the mark CADENACOR (see, to that effect, Ecoblue, paragraph 32).

58 The Board of Appeal therefore rightly held, at paragraphs 25, 26 and 28 of the contested decision, that the more distinctive element of the earlier mark was the word element ‘cor’.

59 The argument of the applicant that the word ‘cadena’ is commonly used as a trade mark in Spain and, consequently, the first three syllables of the earlier mark have, at least, a normal distinctive character cannot undermine that consideration. The frequency with which a word is used as a trade mark is not, in principle, indicative of its distinctiveness. According to the case-law, the distinctiveness of a word is determined according to its capacity to identify the commercial origin of goods or services, enabling the consumer to repeat or avoid a particular purchasing experience (Case C-�329/02 P SAT.1 v OHIM [2004] ECR I-�8317, paragraph 35, and Case T-�304/06 Reber v OHIM – Chocoladefabriken Lindt & Sprüngli (Mozart) [2008] ECR II-�1927, paragraph 87).

60 Likewise, the applicant’s argument that the final syllable ‘cor’ has a weak distinctive character, because the Spanish consumer already knows numerous trade marks and numerous Spanish words and names that contain it must be rejected. The fact that there are several registered trade marks in the furnishings sector containing the element ‘cor’ or numerous Spanish names containing the syllable ‘cor’, which, as already stated, has no particular meaning in Spanish, does not constitute an indication revealing the weak distinctiveness of the sign with regard to the goods in question.

61 Having regard to all the foregoing, consideration should be given to the similarity of the signs at issue.

62 In the present case, the earlier mark’s most distinctive element, on the one hand, and the mark with an international registration, on the other, are identical, as the presence of the element ‘cadena’ in the earlier trade mark does not create a sufficient visual and phonetic difference to eliminate this identity, for the reasons indicated in paragraphs 54 to 59 above.

63 Although, visually and phonetically, the trade marks at issue are of a different length and consist of a different number of words, the overall impression produced by those trade marks leads to the finding that they are similar, owing to their common component (judgment of 1 July 2009 in Case T-�16/08 Perfetti Van Melle v OHIM – Cloetta Fazer (CENTER SHOCK), not published in the ECR, paragraph 43, and judgment of 21 March 2011 in Case T-�372/09 Visti Beheer v OHIM – Meister (GOLD MEISTER), not published in the ECR, paragraphs 28 and 29).

64 With regard to conceptual similarity, it should be noted that, according to the case-law, conceptual differences between the marks at issue may be such as to counteract to a large extent the visual and phonetic similarities existing between those marks. For there to be such a counteraction, however, at least one of the marks at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately, and the other mark must not have such a meaning or must have a totally different meaning (Case T-292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II-4335, paragraph 54, and RESPICUR, paragraph 53).

65 In the present case, the trade mark COR does not have any meaning in Spanish whereas, as stated in paragraph 47 above, the mark CADENACOR means ‘COR chain’, that is, ‘COR chain of shops’. The mere reference to the distribution system in the case of the earlier mark does not add strong semantic value to the fanciful element ‘cor’ and cannot, therefore, give the sign a clear and determined meaning in the Spanish language, as required by the case-law. Hence, the conceptual comparison of the two signs at issue is not apposite (see, to that effect, MUNDICOR, paragraph 90).

66 In view of the visual and phonetic similarities between the signs, and the inappositeness of the conceptual comparison, it must be concluded that the signs COR and CADENACOR are similar (Case T-�286/02 Oriental Kitchen v OHIM – Mou Dybfrost (KIAP MOU) [2003] ECR II-�4953, paragraph 39).

67 With regard to the global assessment of the likelihood of confusion, it should be noted that such an assessment 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 covered. Accordingly, a low degree of similarity between the goods or services may be offset by a high degree of similarity between the marks, and vice versa (Case C-�39/97 Canon [1998] ECR I-�5507, paragraph 17, and VENADO with frame and Others, paragraph 74).

68 It should also be pointed out that the likelihood of confusion cannot be determined in the abstract, but must be assessed in the context of an overall analysis that takes into consideration all of the relevant factors of the case in question, especially the nature of the goods and services at issue, marketing methods, whether the public’s level of attention is higher or lower and the habits of that public in the sector concerned (judgment of 17 February 2011 in Case T-385/09 Annco v OHIM – Freche et fils (ANN TAYLOR LOFT), not yet published in the ECR, paragraph 50).

69 In the present case, the Board of Appeal found, at paragraph 33 of the contested decision, first, that the goods were partly identical and partly similar and, second, that the signs coincided in the fanciful word ‘cor’ and that the word element ‘cadena’ could not serve to distinguish between the signs, even for an attentive consumer. The Board of Appeal held, therefore, at paragraph 34 of the contested decision, that there was a likelihood of confusion between the two signs.

70 Indeed, first, as is apparent from paragraph 37 above, the goods at issue are identical in the case of furniture and similar in the case of carpets and furniture and, second, as is apparent from paragraph 66 above, the signs at issue are visually and phonetically similar, while the higher level of attention assumed on the part of the relevant public does not counteract the coincidence between the most distinctive element of the earlier mark and the international registration (see, to that effect, the judgment of 16 September 2009 in Case T-221/06 Hipp & Co v OHIM – Laboratorios Ordesa (Bebimil), not published in the ECR, paragraph 72).

71 Also, as noted in paragraphs 33 and 35 above, first, the relevant public, as a general rule, uses carpets and furniture together and matches them with each other in order to create a harmonious atmosphere and, second, those goods are regularly sold together in shops that specialise in interior decoration.

72 In view of the above, it must be concluded that the Board of Appeal did not err in finding that there was, in the present case, a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009. Accordingly, the applicant’s single plea in law must be rejected and the action as a whole must be dismissed.

73 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. 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.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> COR Sitzm�bel Helmut Lubke v OHMI - El Corte Ingles (COR) (Intellectual property) [2011] EUECJ T-214/09 (20 October 2011) URL: http://www.bailii.org/eu/cases/EUECJ/2011/T21409.html Cite as: [2011] EUECJ T-214/09, [2011] EUECJ T-214/9

Court of Justice of the European Communities (including Court of First Instance Decisions)