Kraft Foods Schweiz v OHMI - Compania Nacional de Chocolates (CORONA) (Community trade mark) [2012] EUECJ T-357/10 (20 June 2012)

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(Community trade mark - Opposition proceedings - Application for Community figurative mark CORONA - Earlier national word marks KARUNA and KARŪNA - Relative grounds for refusal - No likelihood of confusion - Article 8(1)(b) of Regulation (EC) No 207/2009 - Article 8(5) of Regulation No 207/2009)

1 On 9 May 2006, the intervener - Compañia Nacional de Chocolates, SA - filed an application for 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 following figurative sign:

3 The goods in respect of which registration was sought fall within Class 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 to the following description: 'Chocolate'.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 43/2006 of 23 October 2006.

5 On 21 November 2006, the applicant - Kraft Foods Schweiz Holding GmbH - filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) in relation to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

7 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) and Article 8(5) of Regulation No 40/94 (now Article 8(1)(b) and Article 8(5) of Regulation No 207/2009).

8 By decision of 29 April 2009, the Opposition Division upheld the opposition for all the goods concerned, in particular on the ground that, for the Estonian, Latvian and Lithuanian public, there was a likelihood of confusion between the marks at issue for the purposes of Article 8(1)(b) of Regulation No 207/2009.

9 On 24 June 2009, the intervener filed a notice of appeal with OHIM pursuant to Articles 58 to 64 of Regulation No 207/2009 in relation to the decision of the Opposition Division.

10 By decision of 29 June 2010 ('the contested decision'), the Fourth Board of Appeal upheld the appeal and annulled the decision of the Opposition Division. In essence, the Board of Appeal found that, taken as a whole, the signs at issue were dissimilar, especially in view of the fact that the goods at issue were normally selected from shop shelves by consumers, which made the visual aspect of the signs more relevant. The Board of Appeal found that there was no likelihood of confusion between the marks because the marks at issue are not similar in that respect. In those circumstances, and despite the evidence establishing that the earlier marks had acquired a reputation in their respective territories, the Board of Appeal was of the opinion that it was unnecessary to examine whether the mark applied for would take unfair advantage of the reputation of those trade marks or be detrimental to their image or distinctive character.

14 It should be pointed out that Annexes A7a, A7b, A8, A9a, A9b, A9c and A10 to the application are not in the administrative file. Those documents were produced for the first time before the Court.

15 In that regard, it should be noted that, according to settled case-law, documents produced for the first time before the Court cannot be taken into consideration. The purpose of actions before the Court is to secure review of the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009 and, accordingly, it is not the role of the Court to re-evaluate the factual circumstances in the light of documents which have been produced for the first time before it (see, to that effect, Case T-346/04 Sadas v OHIM - LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II-4891, paragraph 19 and case-law cited). It is appropriate, therefore, to disregard Annexe A10 to the application, which contains examples of chocolate wrappers on which the earlier mark is written in the Cyrillic alphabet, without examining the evidential value of that annex.

16 On the other hand, in the circumstances of the present case, Annexes A7a, A7b, A8, A9a, A9b and A9c to the application must be declared admissible. Although they were produced for the first time before the Court, they are intended to establish a matter of common knowledge - namely, the fact that the Russian language is understood by the people of the Baltic States. As it is, the applicant is entitled to produce documents before the Court as evidence of the accuracy of a matter of common knowledge which was not established in the contested decision of OHIM (see, to that effect and by analogy, Case C-88/11 P LG Electronics v OHIM [2011] ECR I-0000, paragraphs 29 and 30 and the case-law cited). Annexes A7a, A7b, A8, A9a, A9b and A9c to the application must therefore be declared admissible.

17 In support of its action, the applicant relies on two pleas in law: (i) infringement of Article 8(1)(b) of Regulation No 207/2009 and (ii) infringement of Article 8(5) of that regulation.

18 By the first plea in law, the applicant claims that the Board of Appeal was wrong in finding that there is no likelihood of confusion because the signs at issue are not similar.

20 As provided in 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, 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. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

21 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 that same line of authority, 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 account being taken of all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see 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).

22 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).

23 It should be noted that the applicant does not dispute the finding of the Board of Appeal that the relevant territory for the analysis of the likelihood of confusion is Estonia, Latvia and Lithuania and that the relevant public is composed of consumers from those countries. In the present case, given the fact that the goods in question are everyday consumer goods intended for the general public, the relevant public is the average consumer. That average consumer is deemed to be reasonably well informed and reasonably observant and circumspect (Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 26).

24 Furthermore, none of the parties disputes the finding made by the Board of Appeal that the goods at issue are identical.

25 The global assessment of the likelihood of confusion, as regards the visual, phonetic or conceptual similarity 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 that 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).

26 The assessment of the similarity between two marks means more than merely 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 at issue 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 25 above, 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 may be carried out solely on the basis of the dominant element (OHIM v Shaker, paragraph 42, and judgment of 20 September 2007 in Case C-193/06 P Nestlé v OHIM, not published in the ECR, paragraph 43). This may be the position, particularly, where that component is likely by itself to dominate the image which the relevant public retains of that mark, with the result that all the other components of the mark are negligible in the overall impression created by it (Nestlé v OHIM, paragraph 43).

27 Furthermore, there is nothing to prevent a determination as to whether there is visual similarity between a word mark and a figurative mark, because both types of mark have a 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).

28 In the present case, the Board of Appeal found, in paragraphs 19 to 21 of the contested decision, that the signs at issue are not similar, because they create a different visual impression overall, they have only a low degree of phonetic similarity and no conceptual comparison is possible between them.

30 Firstly, as regards the visual comparison, the signs at issue differ not only because of the presence of figurative elements in the sign applied for - white letters in a green oval, all on a rectangular yellow background - but also because of their word elements. Even though the word elements of the marks at issue have three letters out of six in common, a difference arises from the fact that the earlier marks begin with the letters 'ka' and the mark applied for with the letters 'co' and the fact 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 Líneas Aéreas de España (MUNDICOR) [2004] ECR II-965, paragraph 81).

31 The applicant's argument that the figurative elements of the mark applied for are banal and ordinary cannot be accepted. In the figurative mark applied for, the word element is surrounded by an oval which is in turn surrounded by a rectangle, a feature which in itself distinguishes that mark from the earlier marks, which are all solely word marks, even if the difference between the word elements set out in paragraph 30 above are not taken into account.

32 Secondly, as regards the phonetic comparison, it should be noted that the beginnings of the signs at issue are pronounced differently in that the earlier marks begin with the syllable 'ka' and the mark applied for with the syllable 'co'. The second syllables of those signs differ because of their component vowels, since the syllable 'ru' is pronounced with a longer sound than the syllable 'ro' in Estonian, Latvian and Lithuanian. However, because of the fact that the last syllable 'na' is the same in those signs, as is the sequence of similar consonants, there is a low phonetic similarity between the signs taken as a whole (see, to that effect, judgment of 16 September 2009 in Case T-458/07 Dominio de la Vega v OHIM - Ambrosio Velasco (DOMINIO DE LA VEGA), not published in the ECR, paragraph 42).

33 Thirdly, as regards the conceptual comparison, it should be noted that, as is apparent from paragraph 21 of the contested decision, the word 'corona', meaning 'crown' in Spanish, does not have any meaning in Estonian, Latvian or Lithuanian. Accordingly, no conceptual comparison is possible between the signs at issue in the three Baltic States. The mere fact that the Lithuanian word 'karūna' means 'crown' is not sufficient to establish that the relevant public associates the terms 'karuna' or 'karūna' with the word 'corona', which remains a foreign word.

34 That finding cannot be weakened by the applicant's argument that the fact that the Estonian, Latvian and Lithuanian public have a good level of Russian is a matter of common knowledge and that, consequently, the Russian word 'корона', transcribed into the Latin alphabet as 'korona', and meaning 'crown', is directly associated with the mark applied for CORONA as well as with the earlier marks KARUNA and KARŪNA.

35 In that connection, it must be held that, even if the relevant public know that the Russian word 'корона' means 'crown', there is no evidence to show that the relevant public will associate 'корона' in the Cyrillic alphabet - or 'korona', the equivalent term in the Latin alphabet - with the word element 'corona' of the sign applied for, which is a foreign word without meaning in Estonian, Latvian or Lithuanian.

36 As for the applicant's argument that the earlier marks KARUNA and KARŪNA were for years continually used, accompanied by a graphic representation of a crown, to represent chocolate, which reinforced the consumer's association of chocolate with the representation of a crown, it must be held that the earlier marks relied on before the Board of Appeal and before the Court do not contain any graphic representation (see Annexes A3 to A5 to the application) and that, as a matter of fact, they are word marks.

37 On that point, it should be borne in mind that a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element (Case T-211/03 Faber Chimica v OHIM - Industrias Quimicas Naber (Faber) [2005] ECR II-1297, paragraph 33). The protection which results from registration of a word mark attaches to the word mentioned in the application for registration and not the specific graphic or stylistic elements of that mark (see, to that effect, judgment of 13 February 2007 in Case T-353/04 Ontex v OHIM - Curon Medical (CURON), not published in the ECR, paragraph 74).

38 In any event, and for the reasons already stated in paragraph 15 above, the Court cannot compare the sign applied for with figurative signs which form no part of the basis for the opposition proceedings in the present case. Furthermore, in so far as the distinctive character of an earlier mark is important and enjoys broader protection than marks which have a low distinctive character, it should be noted that such analysis takes place during assessment of the likelihood of confusion between the earlier mark and the mark applied for (see, to that effect, Case C-39/97 Canon [1998] ECR I-5507, paragraph 18).

39 Lastly, contrary to the assertions made by the applicant, in paragraph 22 of the contested decision, the Board of Appeal implicitly carried out a global assessment of the similarity of the signs at issue. Thus, in view of the absence of visual similarity, the low phonetic similarity and the absence of conceptual similarity between the marks at issue, the Board of Appeal rightly found that there was 'no possibility' that the relevant public would confuse the marks and, accordingly, that they were neither identical nor similar.

40 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 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 (Canon, paragraph 38 above, paragraph 17, and 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 74). However, such a global assessment of the likelihood of confusion is required only if it has first been found that the two cumulative conditions for the application of Article 8(1)(b) of Regulation No 207/2009 are fulfilled (see, to that effect, judgment of 7 October 2010 in Case T-244/09 Accenture Global Services v OHIM - Silver Creek Properties (acsensa), not published in the ECR, paragraph 27 and the case-law cited).

41 In the present case, the Board of Appeal found, in paragraph 22 of the contested decision, that, despite the identical nature of the goods at issue, the differences between the signs at issue are such as to prevent the relevant consumers from mistaking the commercial origin of those goods. Furthermore, the fact that chocolate is not ordered verbally, but merely selected from shop shelves by consumers, makes the visual aspect of those signs more relevant. In that regard, it should be pointed out that the level of attention of the relevant public to be taken into account for assessing the likelihood of confusion in relation to everyday consumption is neither particularly high nor particularly low (see paragraph 23 above).

42 It follows from the foregoing considerations that one of the cumulative conditions for the application of Article 8(1)(b) of Regulation No 207/2009 is not fulfilled. In view of the lack of similarity between the marks at issue, there is no need to undertake a global assessment of the likelihood of confusion (see paragraph 40 above) or to examine the applicant's other arguments concerning that assessment.

43 Given all those factors, the differences between the signs at issue are such as to exclude the possibility that the relevant public may believe that the goods at issue come from the same undertaking or from economically-linked undertakings. In the present case, the applicant is wrong to rely on case-law according to which marks with a highly distinctive character, whether per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (Case C-251/95 SABEL [1997] ECR I-6191, paragraph 24). The Board of Appeal was therefore right to consider that there was no likelihood of confusion between the signs at issue.

44 In that regard, the decision of the Opposition Division of 8 October 2010, submitted by the applicant, is not capable of calling that conclusion into question. It should be noted that that decision, which relates to other opposition proceedings, post-dates the contested decision and that, in any event, the applicant has not put forward any evidence to show how that decision could affect the outcome of these proceedings.

45 It follows that the first plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be rejected as unfounded.

46 In the context of the second plea in law, the applicant claims that the Board of Appeal failed to rule on the existence of a link between the signs at issue for the purposes of Article 8(5) of Regulation No 207/2009.

47 It should be noted that, under the terms of Article 8(5) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) of that regulation, registration of the trade mark applied for is also to be refused where that mark is identical to, or similar to, the earlier trade mark and where it is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

48 According to the wording of Article 8(5), the application of that provision is to be subject to the following conditions: (i) the marks at issue must be identical or similar; (ii) the earlier mark cited in opposition must have a reputation; and (iii) there must be a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. Since those conditions are cumulative, failure to fulfil one of them is sufficient to render that provision inapplicable (see Case T-67/04 Spa Monopole v OHIM - Spa-Finders Travel Arrangements (SPA-FINDERS) [2005] ECR II-1825, paragraph 30).

49 As regards the condition that the earlier marks must be identical or similar to the mark applied for, as laid down in Articles 8(1)(b) and (5) of Regulation No 207/2009, it should be observed that the factual assessment of similarity is carried out on the basis of the same criteria. If the condition requiring similarity is not met under Article 8(1)(b) of that regulation, it must also be held, on the basis of the same analysis, that nor is that condition met under Article 8(5) (order in Case C-370/10 P Ravensburger v OHIM [2011] ECR I-0000, paragraph 63).

50 It follows that, in paragraph 23 of the contested decision, the Board of Appeal was correct to refrain from applying Article 8(5) of Regulation No 207/2009 on the basis of the finding made, following examination of the signs at issue under Article 8(1)(b) of that regulation, that there was no similarity between them.

53 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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