Mederer v OHMI - Cadbury Netherlands International Holdings (Gummi Bear-Rings) (Judgment) [2016] EUECJ T-210/14 (26 February 2016)

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(Community trade mark — Opposition proceedings — International registration designating the European Community — Figurative mark Gummi Bear-Rings — Earlier national figurative mark GUMMY — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

Mederer GmbH, established in Fürth (Germany), represented by C. Sachs and O. Ruhl, lawyers,

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

the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court, being

Cadbury Netherlands International Holdings BV, established in Breda (Netherlands), represented by A. Padial Martinez, lawyer,

ACTION brought against the decision of the Fifth Board of Appeal of OHIM of 16 December (Case R 225/2013-5), concerning opposition proceedings between Cadbury Netherlands International Holdings B V and Mederer GmbH,

composed of M. E. Martins Ribeiro, President, S. Gervasoni and L. Madise (Rapporteur), Judges,

having regard to the response of OHIM lodged at the Court Registry on 10 September 2014,

having regard to the response of the intervener lodged at the Court Registry on 10 September 2014,

having regard to the decision of 17 October 2014 refusing leave to lodge a reply,

1 On 27 April 2010, the applicant, Mederer GmbH, obtained from the World Intellectual Property Organisation (WIPO) international registration, under No 1 051 028 and designating the European Community, of the figurative marked reproduced below:

2 The applicant claims the colours red, yellow, green, blue, black, the ‘colour of skin’ and grey.

3 The goods in respect of which trade mark registration was sought are in Class 30 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Confectionery consisting of or containing fruit gum and/or foam sugar and/or jelly and/or liquorice, all of the aforesaid goods not for medical purposes’.

4 The particulars of the international registration provided for in Article 152(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1) were published in Community Trade Marks Bulletin No 194/2010 of 15 October 2010.

5 On 13 July 2011, the intervener, Cadbury Netherlands International Holdings B V, filed an opposition against the registration of the trade mark applied for the goods referred to in paragraph 3 above.

6 The opposition was inter alia based on the earlier Spanish figurative mark No 2 029 688, reproduced below, designating, in particular, ‘confectionery’ in Class 30:

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

8 On 21 May 2012, the intervener submitted before OHIM, at the request of the applicant, evidence of genuine use of the earlier trade mark.

9 On 30 November 2012, the Opposition Division upheld the opposition. After finding that the intervener had adduced evidence of genuine use of the earlier trade mark for the ‘confectionery’ in Class 30, the Opposition Division considered that there was a likelihood of confusion between the signs at issue.

10 On 29 January 2013, the applicant filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision. By its appeal, it contested the Opposition Division’s assessment of the likelihood of confusion.

11 By decision of 16 December 2013 (‘the contested decision’), the Fifth Board of Appeal dismissed the appeal. In the first place, it held that the relevant territory was Spain and that the goods designated by the trade mark applied for were directed at the general public, which is deemed to be reasonably observant and circumspect (paragraph 20 of the contested decision). In the second place, the Board of Appeal considered that the goods at issue were identical (paragraph 21 of the contested decision). In the third place, concerning the comparison of the signs at issue, the Board of Appeal, in essence, considered that those signs were similar on account of their visual and phonetic similarities, found in relation to the element ‘gummy’ of the earlier trade mark and the initial element ‘gummi’ of the sign at issue (paragraphs 26 to 28 and 30 of the contested decision). In that context, as regards the conceptual comparison of the signs at issue, the Board of Appeal held that the earlier trade mark had no meaning in Spain, since the term ‘gummy’ is perceived as fanciful by the Spanish public (paragraph 29 of the contested decision). In the fourth place, the Board of Appeal, in essence, considered that, in the light of the similarities referred to, the sign at issue could be perceived as a variant of the earlier trade mark. In that context, it in particular stated that the word element ‘gummi’ retained, in the contested sign, its independent distinctive role (paragraph 31 of the contested decision) and that it was rather likely that the relevant public would identify that element as the company identifier, whereas the terms ‘bear-rings’ could be understood as designating the content of the packaging (paragraph 32 of the contested decision). In the light of those elements, the Board of Appeal found the existence of a likelihood of confusion (paragraph 33 of the contested decision).

– order OHIM and the intervener to pay the costs relating to the appeal and to the proceedings before the Court.

– order the applicant to bear its own costs and to reimburse those incurred by the intervener.

15 In support of its action, the applicant initially raised two pleas in law, alleging infringement of Article 76(1) and Article 8(1)(b) of Regulation No 207/2009, respectively. Nevertheless, it relied, in the context of the second plea in law, on nearly all the arguments raised in support of the first plea in law, to which it referred.

16 At the hearing, in answer to questions put by the Court, the applicant stated that the arguments initially raised in support of the first plea in law could be dealt with in the context of the second plea in law. It acknowledged that, provided all those arguments are thereby examined, the first plea in law would lose its substance and it would not be necessary to respond to the allegation that Article 76(1) of Regulation No 207/2009 was infringed; a formal note of this was recorded in the minutes of the hearing.

17 In those circumstances, it should be considered that the applicant raises a single plea in law, alleging an infringement of Article 8(1)(b) of Regulation No 207/2009.

18 By that plea, the applicant claims, in essence, that the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009, in so far as it found that there was a likelihood of confusion between the signs at issue. According to the applicant, the signs at issue differ visually and are only slightly similar phonetically. Furthermore, the Board of Appeal wrongly considered that the term ‘gummy’ had no meaning for the relevant public and was perceived as a fanciful term and not a generic or descriptive term. Moreover, it failed to take account of certain evidence.

20 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 cannot 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. Furthermore, under Article 8(2)(a)(ii) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered in a Member State with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

21 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 (judgments of 10 September 2008 in Boston Scientific v OHIM — Terumo (CAPIO), T‑325/06, EU:T:2008:338, paragraph 70, and of 31 January 2012 in Cervecería Modelo v OHIM — Plataforma Continental (LA VICTORIA DE MEXICO), T‑205/10, EU:T:2012:36, paragraph 23; see also, by analogy, judgment of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 29).

22 Furthermore, the existence of a likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (judgment in CAPIO, cited in paragraph 21 above, EU:T:2008:338, paragraph 71; see also, by analogy, judgments of 11 November 1997 in SABEL, C‑251/95, ECR, EU:C:1997:528, paragraph 22; Canon, cited in paragraph 21 above, EU:C:1998:442, paragraph 16).

23 That global assessment implies some interdependence between the factors taken into account, in particular between the similarity of the marks and that 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 trade marks, and vice versa (judgments of 13 September 2007 in Il Ponte Finanziaria v OHIM, C‑234/06 P, ECR, EU:C:2007:514, paragraph 48, and of 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 25; see also, by analogy, judgment in Canon, cited paragraph 21 above, EU:C:1998:442, paragraph 17). The interdependence of those factors is expressly referred to in recital 8 of Regulation No 207/2009, which states that the concept of similarity should be interpreted in relation to the likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services designated (see judgment of 10 February 2015 in Boehringer Ingelheim International v OHIM — Lehning entreprise (ANGIPAX), T‑368/13, EU:T:2015:81, paragraph 26 and the case-law cited).

24 Furthermore, the global assessment of 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 wording of Article 8(1)(b) of Regulation No 207/2009 — ‘there exists a likelihood of confusion on the part of the public’ — shows that the perception of the marks by the average consumer of the type of goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgments of 18 September 2012 in Scandic Distilleries v OHIM — Bürgerbräu, Röhm & Söhne (BÜRGER), T‑460/11, EU:T:2012:432, paragraph 27, and ANGIPAX, cited in paragraph 23 above, EU:T:2015:81, paragraph 27; see also, by analogy, judgment in SABEL, cited in paragraph 22 above, EU:C:1997:528, paragraph 23).

25 For the purposes of the global assessment of the likelihood of confusion, the average consumer of the goods concerned is deemed to be reasonably well informed, and reasonably observant and circumspect. Furthermore, account should be taken of the fact that the average consumer only rarely has the chance to compare the various marks directly but must rely on his imperfect recollection of them. 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 judgments in BÜRGER, paragraph 24 above, EU:T:2012:432, paragraph 28 and the case-law cited, and ANGIPAX, paragraph 23 above, EU:T:2015:81, paragraph 28 and the case-law cited).

26 The Board of Appeal’s assessment of the likelihood of confusion between the signs at issue must be examined in the light of these considerations.

27 In the first place, as the Board of Appeal correctly stated in paragraph 20 of the contested decision, without being challenged on this point by the applicant, the relevant territory is Spain and the goods at issue are directed at the general public, which is deemed to be reasonably well informed and reasonably observant and circumspect.

28 Since the goods at issue are confectionery (see paragraphs 3 and 6 above), the degree of attention of that public is rather low (see judgment of 25 September 2015 in August Storck v OHIM (2good), T‑366/14, subject to appeal, EU:T:2015:697, paragraph 20 and the case-law cited; see also, to that effect, judgment of 10 October 2012, Bimbo v OHIM — Panrico (BIMBO DOUGHNUTS), T‑569/10, EU:T:2012:535, paragraph 99).

29 In the second place, in paragraph 21 of the contested decision, the Board of Appeal correctly found, and without it being challenged, that the goods at issue should be considered to be identical.

30 As was noted in paragraph 24 above, the global assessment must, in relation to the visual, phonetic or conceptual similarity of the signs in question, be based on the overall impression given by the signs, bearing in mind, inter alia, their distinctive and dominant elements.

31 According to the case-law, two signs 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 (see judgments in MATRATZEN, cited in paragraph 23 above, EU:T:2002:261, paragraph 30 and the case-law cited, and of 10 December 2008 in MIP Metro v OHIM — Metronia (METRONIA), T‑290/07, EU:T:2008:562, paragraph 41 and the case-law cited).

32 In the present case, the sign at issue is a figurative sign consisting of a graphic element and two word elements, namely ‘gummi’ and ‘bear-rings’. That sign is represented in red, orange, yellow, green, blue, black, the ‘colour of skin’ and grey. The graphic element, in the upper part of the sign, consists of a small boy with his right hand held out in front of him, on which he is wearing four rings decorated with bears. The word element ‘gummi’ is below the small boy’s hand and above the word element ‘bear-rings’, which is situated in the lower part of the sign at issue. The two word elements are in lower-case white letters — only the first letter of the words ‘gummi’ and ‘bear’ and ‘rings’ being in upper-case letters — and in rounded characters of an unoriginal font. The two word elements are surrounded by a multi-coloured frame. The element ‘gummi’ is written in characters which are smaller than the element ‘bear-rings’.

33 The earlier trade mark is a figurative mark consisting of the single word element ‘gummy’. That element is written in rounded upper-case letters, represented in bold in an unoriginal font, which overlap slightly. Those letters, in white, are outlined in black and, in certain parts, shaded in black.

34 In the contested decision, the Board of Appeal noted, first, that, visually, the sign at issue included the figurative element ‘gummy’ of the earlier trade mark almost identically and that the differences, relating to the substitution of the letter ‘i’ for the letter ‘y’ and the use of lower-case letters in the sign at issue, would probably be overlooked by consumers. It also noted that the signs at issue differ as a result of the colours used and the presence of the graphic element representing the small boy in the contested sign (paragraphs 26 and 27 of the contested decision). Next, the Board of Appeal noted that, although the contested sign was slightly longer than the earlier trade mark, the signs at issue were nevertheless phonetically similar in so far as they shared the term ‘gummy’/‘gummi’ which would be pronounced identically by Spanish consumers (paragraph 28 of the contested decision). Finally, the Board of Appeal considered that the term ‘gummy’ had no meaning in Spain and would be perceived, by the relevant public, as a fanciful term. According to the Board of Appeal, the Spanish words ‘chicle’ and ‘gominola’, meaning ‘chewing gum’ are distant from the term ‘gummy’, so that the latter would not be perceived, by the relevant public, as a generic or descriptive term (paragraph 29 of the contested decision). In the light of the visual and phonetic similarities, the Board of Appeal concluded that the signs at issue were similar (paragraph 30 of the contested decision).

35 The applicant claims that the signs at issue differ considerably visually due to the graphic presentation of the contested sign and its word element ‘bear-rings’. The word element ‘gummi’ of the contested sign is insignificant in that sign.

36 In that regard, it is not disputed that the word element ‘gummi’ of the contested sign is very similar to the single word element ‘gummy’ of the earlier trade mark. Those elements share their first four letters (‘g’, ‘u’, ‘m’ and ‘m’) and only their last letter differs (respectively ‘i’ and ‘y’). Those words are written in fonts which, without being identical, are similar, but differ as a result of the use of lower-case letters in the contested sign, and upper-case letters in the earlier trade mark. Those differences are however insignificant and will probably be overlooked by the relevant public, as the Board of Appeal correctly pointed out in paragraph 26 of the contested decision.

37 The signs at issue differ also as a result of the inclusion, in the contested sign, of the graphic element representing the small boy and the word element ‘bear-rings’. They differ also in so far as the contested sign is represented in colour, whereas the earlier trade mark is represented in black and white.

38 However, in the light of the fact that the word elements ‘gummi’ and ‘gummy’ are visually almost identical, it must be considered that the elements of dissimilarity referred to in paragraphs 36 and 37 above are not capable of dispelling the impression on the part of the relevant public that there is a certain degree of visual similarity between those signs when assessed globally.

39 That conclusion applies despite the small size of the word element ‘gummi’ in comparison with the other elements making up the contested sign. It should be noted that the word element ‘gummi’ is situated in the middle of that sign and thus occupies a central position within it. Despite its small size, it remains clearly identifiable within that sign and attracts the attention of consumers, since it is the first word element of that sign and because of the use of the double letter ‘m’, which is unusual in Spanish. Therefore, contrary to the applicant’s arguments, that element cannot be considered to be purely negligible or insignificant in the overall impression produced by the contested sign.

40 In the light of the foregoing, the visual similarity of the signs at issue must be characterised as low.

41 The applicant considers that the phonetic similarity of the signs at issue is low.

42 It is not disputed that the signs at issue are of differing lengths. Thus, whereas the earlier trade mark consists of only one word (‘gummy’) made up of two syllables (‘gum’ and ‘my’), the contested sign consists of three words (‘gummi’, ‘bear’ and ‘rings’) and of four syllables (‘gum’, ‘mi’, ‘bear’ et ‘rings’). It necessarily follows that there is a certain difference between those signs in terms of rhythm and intonation.

43 The fact remains, however, that, as the Board of Appeal correctly found in paragraph 28 of the contested decision, the word elements ‘gummy’ and ‘gummi’ are pronounced identically by the relevant public, since the letters ‘y’ and ‘i’ are pronounced identically in Spanish.

44 Moreover, the word ‘gummi’ constitutes the initial word element of the sign at issue. According to the case-law, the initial part of word elements normally has a greater visual impact than the final part, so that consumers normally attach more importance to it (see judgment of 15 November 2011 in El Coto De Rioja v OHIM — Álvarez Serrano (COTO DE GOMARIZ), T‑276/10, EU:T:2011:661, paragraph 39 and the case-law cited).

45 It follows that the Board of Appeal was correct to find that the signs at issue were phonetically similar.

46 It should be noted that the signs at issue both consist of English words. Although, as the applicant in essence points out, it is true that, for members of the public who understand English, the English word ‘gummy’ is descriptive of the goods at issue, it should however be noted that the earlier trade mark is a Spanish trade mark. The relevant public therefore consists of average Spanish consumers who are reasonably well informed and reasonably observant and circumspect, for whom English is a foreign language.

47 In paragraph 29 of the contested decision, the Board of Appeal, in essence, rejected any conceptual comparison of the signs at issue, on the ground that the relevant public would perceive the English word ‘gummy’ as a fanciful term, and not as a descriptive term, and that that public would not make a connection between that word and the Spanish words ‘chicle’ or ‘gominola’ (chewing gum).

48 It thus follows from the contested decision that, although the Board of Appeal did not expressly assess the relevant public’s level of English, it nevertheless, at least implicitly, found that it was weak by concluding that that public would not be capable of understanding the English word ‘gummy’.

49 In the first place, the applicant, without directly contesting the conclusion drawn by the Board of Appeal at the stage of the conceptual comparison of the signs at issue, nevertheless claims that paragraph 29 of the contested decision is erroneous, since the relevant public has a command of English and understands, therefore, the descriptive meaning of the word ‘gummy’.

51 In that regard, it should be noted that, as regards average consumers, knowledge of a foreign language cannot in general be assumed (see, to that effect, judgments of 13 September 2010 in Inditex v OHIM — Marín Díaz de Cerio (OFTEN), T‑292/08, ECR, EU:T:2010:399, paragraph 83; of 24 May 2011 in Space Beach Club v OHIM — Flores Gómez (SpS space of sound), T‑144/10, EU:T:2011:243, paragraph 63, and of 3 July 2013 in Warsteiner Brauerei Haus Cramer v OHIM — Stuffer (ALOHA 100% NATURAL), T‑243/12, EU:T:2013:344, paragraph 35).

52 Moreover, it is apparent from settled case-law that the Spanish public’s degree of familiarity with the English language is generally held to be low (see judgment of 18 April 2007 in House of Donuts v OHIM — Panrico (House of donuts), T‑333/04 and T‑334/04, EU:T:2007:105, paragraph 53 and the case-law cited; judgments in BIMBO DOUGHNUTS, cited in paragraph 28 above, EU:T:2012:535, paragraph 63, and of 26 February 2015, 9Flats v OHIM — Tibesoca (9flats.com), T‑713/13, EU:T:2015:114, paragraph 62).

53 In those circumstances and since the English word ‘gummy’ is not a basic English-language word, the Board of Appeal was correct to conclude that that word would not be understood by the Spanish public and that the latter would therefore perceive it to be a fanciful term.

54 In the light of the applicant’s arguments, first of all, it is important also to note that although, both before OHIM and the Court, the applicant claimed that the relevant public and, in particular, younger consumers, understood English and that it was logical that a reasonably well informed person understands that language, the fact remains that it supplied no evidence capable of substantiating that claim. On the other hand, the intervener presented, before the Opposition Division, an article published on the Internet, which reported the weak knowledge of English on the part of the Spanish public.

55 In any event, even if Spanish youth have a better knowledge of English than the previous generations (see, to that effect, the judgment of 23 October 2002 in Oberhauser v OHIM — Petit Liberto (Fifties), T‑104/01, ECR, EU:T:2002:262, paragraph 42), it should still be noted that that argument of the applicant is based on an erroneous premiss that the goods designated by the sign at issue, namely confectionery, were specifically aimed at the youngest consumers. As is apparent from paragraph 27 above, those goods are aimed at all consumers.

56 Next, contrary to the applicant’s arguments, the English word ‘gummy’ will not be perceived, by the Spanish public, as a variant of the Spanish word ‘goma’ (gum), in the light of both the differences between those two words and the limited knowledge of English attributed to that public.

57 Moreover, in so far as the applicant claims that the word ‘gummy’ is commonly used in Spain in connection with the goods at issue, as is established by searches carried out on an Internet search engine by combining the terms ‘gummi’ and ‘golosina’ or ‘gummi’ and ‘dulce’, it must be noted that that fact cannot serve to demonstrate the generic or descriptive character of the word ‘gummy’ for Spanish consumers. Such a search is just as likely to generate generic or descriptive terms as terms which are not (see, to that effect and by analogy, judgment in House of donuts, cited in paragraph 52 above, EU:T:2007:105, paragraph 51).

58 Finally, it should be noted that, contrary to what is claimed by the applicant, the Board of Appeal did not contradict itself by stating, on the one hand, that the relevant public does not understand the word ‘gummy’ and, on the other hand, that that public understands the word ‘bear-rings’.

59 In that regard, it should be noted that, after having found, during the conceptual comparison of the signs at issue, that the relevant public would not grasp the meaning of the word ‘gummy’ (paragraph 29 of the contested decision), the Board of Appeal in particular observed, at the stage of the global assessment of the likelihood of confusion, that ‘[the contested sign] might well be perceived as a variant of the earlier mark’, that ‘the term “gummi” retain[ed] its independent distinctive role in [that sign] because the Spanish public [would] not understand the meaning of [that sign] as a whole’ and that ‘[it was] likely that the relevant consumer [would] identify the word “[gummi]” in the [contested sign] as the company identifier, whereas the words “bear-rings” [could] be understood as the content of the packaging, i.e., jelly confectionery in the shape of bear rings’ (paragraphs 31 and 32 of the contested decision).

60 Although it is true that those findings of the Board of Appeal are not completely unambiguous as regards the relevant public’s knowledge of the English language, it must nevertheless be noted that, in paragraphs 31 and 32 of the contested decision, the Board of Appeal, in essence, confirmed that consumers could perceive the contested sign as deriving from the earlier trade mark as a variant, without commenting on the relevant public’s knowledge of the English language. Thus it was able to consider that the consumers could be led to associate the word element ‘gummi’ of the contested sign with the earlier trade mark and make, as the case may be, a connection between the terms ‘bear-rings’ and the contents of the packaging.

61 In any event, even assuming that the Board of Appeal intended to maintain that Spanish consumers understand the meaning of the words ‘bear-rings’, without however understanding the word ‘gummy’, it should be noted that the first words, ‘bear’ and ‘rings’, must, unlike the word ‘gummy’, be regarded as basic words of the English language. Therefore, it cannot be excluded that, despite the weak level of knowledge of English attributed to Spanish consumers, they understand the meaning of the words ‘bear’ and ‘rings’ without being able to understand the word ‘gummy’.

62 In the second place, the applicant complains that the Board of Appeal failed, in its assessment of the relevant public’s understanding of the word ‘gummy’, to take account of the descriptive character of that word in the English language, to ascertain the linguistic knowledge of the relevant public and to take into consideration the fact that English is a language spoken internationally and that Spanish consumers, in particular young consumers, have a good level of English, that they understand, in any event, the word ‘gummy’ as a variant of the Spanish word ‘goma’ (gum) and that the word ‘gummy’ is commonly used in Spain in connection with the goods at issue.

63 First of all, having regard to paragraph 48 above, the claim that the Board of Appeal failed to evaluate the relevant public’s linguistic knowledge has no basis in fact.

64 Next, the argument alleging that the Board of Appeal failed to take account of the descriptive character of the word ‘gummy’ is based on the false premiss that the relevant public understands English.

65 Finally, while it is true that, in the contested decision, the Board of Appeal did not expressly come to a decision on the other arguments referred to in paragraph 62 above, put forward by the applicant during the proceedings before OHIM, it must nevertheless be noted that, according to the case-law, it is not obliged to adopt a position on all the arguments put forward by the parties. It is sufficient if it sets out the facts and the legal considerations having decisive importance in the context of the decision (judgment of 9 December 2010 in Tresplain Investments v OHIM — Hoo Hing (Golden Elephant Brand), T‑303/08, ECR, EU:T:2010:505, paragraph 46; see also, by analogy, judgment of 11 January 2007 in Technische Glaswerke Ilmenau v Commission, C‑404/04 P, EU:C:2007:6, paragraph 30). It follows that the fact that the Board of Appeal did not reproduce all of the arguments of one party, or did not address each of those arguments, does not, in itself, allow it to be concluded that the Board of Appeal refused to take them into consideration (see, to that effect, judgment in Golden Elephant Brand, cited above, EU:T:2010:505, paragraph 46).

66 Therefore, in the present case, the mere failure to explicitly mention certain arguments put forward by the applicant is not such as to render the contested decision unlawful, since the Board of Appeal clearly set out the considerations on which it based its assessment of the relevant public’s linguistic knowledge.

67 In the light of the above, it must be concluded that the Board of Appeal was correct to find that the relevant public would not understand the meaning of the English word ‘gummy’.

68 It follows that, since the earlier trade mark does not evoke anything specific on the part of the relevant public, it cannot be held that there is a conceptual similarity between the signs at issue.

69 As was pointed out in paragraph 23 above, the global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, in particular the similarity of the trade marks and that of the goods or services designated. Accordingly, a lesser degree of similarity between the goods or services designated may be offset by a greater degree of similarity between the trade marks and vice versa.

70 In the present case, it must be noted, first, that the goods at issue are identical. Secondly, the signs at issue are visually and phonetically similar, since it was stated that the degree of visual similarity was classified as low.

71 In those circumstances and in the light moreover of the low level of attentiveness on the part of the average consumer (see paragraph 28 above) and the interdependence between the similarity of the signs at issue and the goods designated, it must be concluded that the Board of Appeal did not infringe Article 8(1)(b) of Regulation No 207/2009 by finding, in paragraph 33 of the contested decision, that there is a likelihood of confusion on the part of the relevant public.

73 First, the applicant claims that the Board of Appeal failed to evaluate the earlier trade mark’s degree of distinctiveness, so that its assessment of the likelihood of confusion is incomplete.

74 In that regard, it suffices to note that, while it is true that the Board of Appeal did not expressly come to a decision on the earlier trade mark’s degree of distinctiveness, the Opposition Division, for its part, attributed to it a normal degree of distinctiveness.

75 Given that the Board of Appeal upheld the Opposition Division’s decision in its entirety, and in the light of the continuity in terms of functions between the Opposition Divisions and Boards of Appeal as demonstrated by Article 64(1) of Regulation No 207/2009 (see, to that effect, judgments of 13 March 2007 in OHIM v Kaul, C‑29/05 P, ECR, EU:C:2007:162, paragraph 30, and 10 July 2006 in La Baronia de Turis v OHIM — Baron Philippe de Rothschild (LA BARONNIE), T‑323/03, ECR, EU:T:2006:197, paragraphs 57 and 58), that decision and its statement of reasons form part of the context in which the Board of Appeal’s decision was adopted, a context which is known to the parties and which allows the Court fully to conduct its review of the legality as regards the merits of the assessment of the likelihood of confusion (see, to that effect, judgment of 21 November 2007 in Wesergold Getränkeindustrie v OHIM — Lidl Stiftung (VITAL FIT), T‑111/06, EU:T:2007:352, paragraph 64).

76 Secondly, the applicant relies on the at most low distinctiveness of the earlier trade mark, which is, in its opinion, descriptive.

77 First, it should be noted that that argument is based on a false premiss. It has already been stated, in paragraph 67 above, that, contrary to the applicant’s arguments, the relevant public does not understand the meaning of the English word ‘gummy’, which thus cannot be qualified as descriptive for that public.

78 In any event, it should be noted that, while according to settled case-law the more distinctive the earlier mark, the greater the risk of confusion (judgment in SABEL, cited in paragraph 22 above, EU:C:1997:528, paragraph 24), that case-law does not in any way imply that there is necessarily no likelihood of confusion where the distinctive character of the earlier mark is low (order of 22 January 2010 in ecoblue v OHIM and Banco Bilbao Vizcaya Argentaria, C‑23/09 P, EU:C:2010:35, paragraph 39; see also, in that regard, order of 27 April 2006 in L’Oréal v OHIM, C‑235/05 P, EU:C:2006:271, paragraph 45). In the present case, in the light of the identity of the goods, the visual and phonetic similarity of the signs at issue and the low level of attention of the relevant public, there exists a likelihood of confusion between the signs at issue.

79 Secondly, assuming that the applicant intends to claim that the earlier trade mark is devoid of any distinctive character, it should be noted that, in order to avoid infringing Article 8(1)(b) of Regulation No 207/2009, it is necessary to acknowledge a certain degree of distinctiveness of an earlier national mark on which an opposition against the registration of a Community trade mark is based (judgment of 24 May 2012 in Formula One Licensing v OHIM, C‑196/11 P, ECR, EU:C:2012:314, paragraph 47).

80 It follows that the earlier trade mark cannot be found to be generic, descriptive or devoid of any distinctive character, without calling into question its validity in proceedings concerning the registration of a Community trade mark, which would give rise to an infringement of Article 8(1)(b) of Regulation No 207/2009 (see, to that effect, judgment in Formula One Licensing v OHIM, cited in paragraph 79 above, EU:C:2012:314, paragraphs 51 and 52).

81 It cannot, in those circumstances, be considered, in the present case, that the earlier trade mark is devoid of distinctive character or descriptive, as the applicant indeed acknowledged at the hearing in response to a question put by the Court.

82 Thirdly, the applicant claims that, since English is the language which is most used in business within the European Union, the possibility of registering, in a Member State, a descriptive English term as a trade mark and of using that mark to object to any subsequent Community trade mark application comprising a combination of that English term and a distinctive element is contrary to the Community trade mark system and that, in view of the very low degree of distinctiveness of the earlier mark, the scope of its protection only covers signs that are visually identical or similar.

83 In that regard, first, it should be noted that it is possible that, due to linguistic, cultural, social and economic differences between the Member States, a sign which is devoid of distinctive character or descriptive of the goods or services concerned in one Member State is not so in another Member State (judgments of 9 March 2006 in Matratzen Concord, C‑421/04, ECR, EU:C:2006:164, paragraph 25, and BIMBO DOUGHNUTS, cited in paragraph 28 above, EU:T:2012:535, paragraph 61). That is precisely the situation in the present case, since although, as was stated in paragraph 46 above, the word element ‘gummy’ of the earlier trade mark is descriptive of the goods at issue for the English-speaking public, that element is nevertheless devoid of any descriptive character for the relevant public, whose degree of familiarity with the English language is taken to be weak (see paragraphs 52 and 53 above).

84 Secondly, in so far as the applicant alleges, in essence, that a descriptive element, appearing in an earlier national trade mark, must remain available throughout the European Union, it should be noted that it has already been held that the fact that there is, for economic operators, a need for a sign to be available cannot be one of the factors relevant to the assessment of the existence of a likelihood of confusion (judgments of 28 November 2013 in Vitaminaqua v OHIM — Energy Brands (vitaminaqua), T‑410/12, EU:T:2013:615, paragraph 42, and 9flats.com, cited in paragraph 53 above, EU:T:2015:114, paragraph 65; see also, by analogy, the judgment of 10 April 2008 in adidas and adidas Benelux, C‑102/07, ECR, EU:C:2008:217, paragraphs 29 to 31).

85 Fourthly, the applicant claims that, according to the case-law, in the light of the way in which the goods in question are marketed, the visual difference overrides the phonetic similarity of those signs.

86 At the outset, it should be noted that that argument is based on the premiss that the signs at issue are visually dissimilar. Moreover, it is apparent from paragraphs 35 to 40 above that, in contrast to that assumption, the signs at issue must be considered, not as being visually dissimilar, but as being visually similar to a low extent.

87 Moreover, it must be noted that, indeed, according to settled case-law, in the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight. It is thus important to analyse the objective conditions in which the marks may be presented on the market. The extent of the similarity or difference between the signs may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by the marks at issue are marketed. If the goods covered by the marks in question are usually sold in self-service stores where the consumers choose the goods themselves and must therefore rely primarily on the image of the trade mark applied to the product, the visual similarity between the signs will, as a general rule, be more important. If, on the other hand, the goods covered are primarily sold orally, greater weight will usually be attributed to any phonetic similarity between the signs (see judgments of 11 December 2013 in Eckes-Granini v OHIM — Panini (PANINI), T‑487/12, EU:T:2013:637, paragraph 63 and the case-law cited, and of 29 January 2014 in Goldsteig Käsereien Bayerwald v OHIM — Vieweg (goldstück), T‑47/13, EU:T:2014:37, paragraph 41 and the case-law cited).

88 First, it should be pointed out that the facts of the present case differ from those giving rise to the judgments in PANINI, cited in paragraph 87 above (EU:T:2013:637), and goldstück, cited in paragraph 87 above (EU:T:2014:37), cited by the applicant. In those cases, in which the Court considered that, as a result of the conditions in which the goods at issue were presented on the market, the visual aspect of the signs at issue was more important than the phonetic aspect, the signs at issue were visually dissimilar, weakly or partly similar phonetically and different or incapable of being compared conceptually (see, to that effect, judgments in PANINI, cited in paragraph 87 above, EU:T:2013:637, paragraphs 59, 67 and 68, and goldstück, cited in paragraph 87 above, EU:T:2014:37, paragraphs 36 and 42). By contrast, in the present case, it was stated in paragraphs 36, 40 and 86 above that the signs at issue were, at most, of low visual similarity.

89 Secondly, it must be noted that it does not follow from the case-law cited in paragraph 87 above that, as regards the confectionery goods, which are normally sold in self-service shops in which consumers choose the product themselves and must, therefore, rely primarily on the image of the trade mark applied to the product, the finding of a low degree of visual similarity between the signs at issue precludes the recognition of a likelihood of confusion between those signs and that the phonetic similarity of those signs is necessarily irrelevant.

90 In the circumstances of the present case, it must be considered that, even if the relevant public, when purchasing the goods at issue, perceived the signs at issue visually, the fact remains that, in the light of the identity of the goods and the consumers’ low level of attentiveness, the low degree of visual similarity between the signs at issue is not capable of excluding the existence of a likelihood of confusion between those signs.

91 Nor can the applicant criticise the Board of Appeal for having failed to take account of the fact that the goods at issue were principally purchased ‘at sight’. Since the Board of Appeal found the signs at issue to be visually similar, it was not necessary for it to explicitly take a position on the argument, raised by the applicant during the proceedings before OHIM, alleging that the goods at issue are principally purchased ‘at sight’.

92 In the light of all the foregoing considerations, it is necessary to reject the single plea in law as unfounded and, therefore, dismiss the present action in its entirety.

93 In those circumstances, since the Board of Appeal, in the contested decision, dismissed the action against the decision of the Opposition Division, which upheld the opposition and refused the registration of the sign at issue, it is not necessary to rule on the intervener’s third head of claim (see paragraph 14 above). In any event, it should be noted that, in the context of an action brought before the Court against the decision of a board of appeal of OHIM, the latter is required, under Article 65(6) of Regulation No 207/2009, to take the measures necessary to comply with the judgment of that court. Accordingly, it is not for the Court to issue directions to OHIM; rather, it is for OHIM to draw the appropriate inferences from the operative part and grounds of the judgment of the Court (see judgments of 19 November 2008 in Ercros v OHIM — Degussa (TAI CROS), T‑315/06, EU:T:2008:513, paragraph 13 and the case-law cited, and of 18 June 2013 in Otero González v OHIM — Apli-Agipa (APLI-AGIPA), T‑522/11, EU:T:2013:325, paragraph 41 and the case-law cited).

94 Under Article 134(1) 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) >> Mederer v OHMI - Cadbury Netherlands International Holdings (Gummi Bear-Rings) (Judgment) [2016] EUECJ T-210/14 (26 February 2016) URL: http://www.bailii.org/eu/cases/EUECJ/2016/T21014.html Cite as: [2016] EUECJ T-210/14, EU:T:2016:105, ECLI:EU:T:2016:105

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