LLR-G5 v EUIPO - Glycan Finance (SILICIUM ORGANIQUE G5 LLR-G5) (Judgment) [2016] EUECJ T-539/15 (28 September 2016)

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(EU trade mark — Opposition proceedings — Application for figurative EU trade mark SILICIUM ORGANIQUE G5 LLR-G5 — Earlier international word marks Silicium Organique G5- Glycan 5-Si-Glycan-5-Si-G5 and Silicium Organique G5 — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

LLR-G5 Ltd, established in Castlebar (Ireland), represented by A. von Mühlendahl and H. Hartwig, lawyers,

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral, acting as Agent,

ACTION brought against the decision of the First Board of Appeal of EUIPO of 11 June 2015 (Case R 291/2014-1), relating to opposition proceedings between Glycan Finance Corp. and LLR-G5,

composed of A. Dittrich, President, J. Schwarcz and V. Tomljenović (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 17 September 2015,

1 On 17 November 2011, the applicant, LLR-G5 Ltd, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) in accordance with Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

2 The trade mark in respect of which registration was sought is the figurative sign reproduced below:

3 The goods in respect of which the registration was sought are in Classes 1, 3, 5 and 32 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:

– Class 1: ‘Chemicals and chemical products, not including resins or hardeners for resins, for use in industry; organic silicon for use in industry’;

– Class 3: ‘Toilet preparations; cleaning preparations; cosmetic preparations; preparations for the care of the skin and hair; anti-aging creams; soaps, perfumery, hair lotions, dentifrices, all containing organic silicon; preparations containing organic silicon for the care of the body, skin and hair’;

– Class 5: ‘Pharmaceutical preparations; medicated preparations for the care of the skin and hair; medicated toilet preparations; nutritional food supplements; food supplements containing organic silicon’;

– Class 32: ‘Non-alcoholic drinks and preparations for making such drinks; drinks containing organic silicon and included in Class 32; preparations containing organic silicon for use in making beverages’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 47/2012 of 7 March 2012.

5 On 6 June 2012, the other party to the proceedings before the Board of Appeal of EUIPO, Glycan Finance Corp. Ltd, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.

– international registration No 944 740 for the word mark ‘Silicium Organique G5- Glycan 5-Si-Glycan-5-Si-G5’, designating the European Union, the United Kingdom, Ireland, Benelux, Germany, Spain, France, Italy, Portugal and Romania, in respect of ‘chemical products’ in Class 1, ‘pharmaceutical products’ in Class 5 and ‘beers’ in Class 32 (‘the first earlier international mark’);

– international registration No 952 406 for the word mark ‘Silicium Organique G5’, designating the European Union, the United Kingdom, Ireland, Benelux, Germany, Spain, France, Italy, Portugal and Romania, in respect of ‘mineral waters’ in Class 32 (‘the second earlier international mark’);

– French registration No 3 457 452 for the word mark ‘SILICIUM ORGANIQUE GLYCAN 5 SI-GLYCAN-5 SI-G5’, in respect of goods in Classes 1, 3 and 5 (‘the earlier French mark’).

7 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009.

8 By decision of 27 November 2013, first, the Opposition Division decided not to take account of the earlier French mark on the ground that it had been registered under the name of Mr A. and that the other party to the proceedings before the Board of Appeal had not proved that it was the proprietor of that mark.

9 Secondly, the Opposition Division refused registration of the mark applied for because there was a likelihood of confusion between that mark and the first earlier international mark covering ‘toilet preparations; cosmetic preparations, preparations for the care of the skin and hair; anti-aging creams; soaps, hair lotions, dentifrices, all containing organic silicon; preparations containing organic silicon for the care of the body, skin and hair’ in Class 3, ‘pharmaceutical preparations; medicated preparations for the care of the skin and hair; medicated toilet preparations; nutritional food supplements; food supplements containing organic silicon’ in Class 5 and ‘non-alcoholic drinks and preparations for making such drinks; drinks containing organic silicon and included in Class 32; preparations containing organic silicon for use in making beverages’ in Class 32.

10 Thirdly, the Opposition Division dismissed the opposition because there was no likelihood of confusion between the mark applied for and the first earlier international mark covering ‘chemicals and chemical products, not including resins and hardeners for resins, for use in industry; organic silicon for use in industry’ in Class 1 and ‘cleaning preparations; perfumery; all containing organic silicon’ in Class 3.

11 On 22 January 2014, the applicant lodged an appeal with EUIPO pursuant to Articles 58 to 64 of Regulation No 207/2009 against the Opposition Division’s decision.

12 On 6 April 2014, the other party to the proceedings before the Board of Appeal filed its observations in response to the applicant’s pleading setting out the grounds for the action. In its observations, it requested, in accordance with Article 8(3) of Commission Regulation (EC) No 216/96 of 5 February 1996 laying down the rules of procedure of the Boards of Appeal of OHIM (OJ 1996 L 28, p. 11), that registration of the mark applied for be rejected in its entirety.

13 By decision of 11 June 2015 (‘the contested decision’), the First Board of Appeal re-examined the opposition as regards the entire list of goods which the mark applied for sought to cover (see paragraph 11 of the contested decision).

14 In essence, first, the Board of Appeal examined the ground for refusal of registration raised by the applicant by virtue of Article 8(1)(b) of Regulation No 207/2009. In that context, on the one hand, it rejected the applicant’s request for annulment of the decision of the Opposition Division. On the other hand, it upheld in part the application of the other party to the proceedings before the Board of Appeal, refusing registration of the mark applied for in respect of ‘chemicals and chemical products, not including resins or hardeners for resins, for use in industry; organic silicon for use in industry’ in Class 1, and ‘cleaning preparations; all containing organic silicon’ in Class 3, so that the opposition was upheld in respect of all the goods covered by the mark applied for with the exception of ‘perfumery; all containing organic silicon’ (see paragraph 50 of the contested decision).

15 Secondly, the Board of Appeal examined the ground for refusal of registration raised by the applicant pursuant to Article 8(5) of Regulation No 207/2009. In that regard, it rejected the applicant’s application for annulment of the decision of the Opposition Division on the ground that the applicant had failed to adduce any facts, evidence or observations in support of its application.

16 By application lodged at the Court Registry on 17 September 2015, the applicant brought the present action.

– annul the contested decision in so far as it dismissed the applicant’s appeal against the decision of the Opposition Division and in so far as it upheld the appeal of the other party before the Board of Appeal;

– reject the opposition lodged by the other party to the proceedings before the Board of Appeal;

19 In support of the action, the applicant essentially puts forward two pleas in law. The first plea alleges infringement of Article 8(1) of Regulation No 207/2009. The second plea alleges infringements of the duty on the Board of Appeal to state reasons.

20 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

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 the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the trade marks and that of the goods or services identified (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, 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 the judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited).

23 Furthermore, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products or services concerned, who is reasonably well informed and reasonably observant and circumspect (see the judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007/46, paragraph 42 and the case-law cited).

24 Whether, in the present case, there is a likelihood of confusion between the mark applied for and the first earlier international trade mark, must be examined in the light of the foregoing provisions and case-law. It is only if the Court finds that there is no such likelihood of confusion between the marks that it will be necessary to examine whether there is a likelihood of confusion between the mark applied for and the second earlier international mark.

25 As regards the relevant public, first, it must be held, as a preliminary point, that the Board of Appeal found, in paragraph 27 of the contested decision, that the consumers who should be taken into account were those established in France, Italy and Romania. In that regard, it suffices to state that, while the likelihood of confusion must be assessed, in the present case, having regard to all European Union consumers, the Board of Appeal was fully entitled to take into consideration, in particular, consumers in French, Italian and Romanian territory — which the applicant, moreover, does not dispute — in so far as the marks at issue include the word elements ‘silicium organique’ the meaning of which they would easily understand.

26 Second, the Board of Appeal held, in paragraph 26 of the contested decision, that the degree of attention of the relevant public would vary according to the nature of the goods at issue and the profile of the consumer of those goods. According to the Board of Appeal, whilst consumers of beer must be regarded as having an average degree of attention and consumers of pharmaceutical goods show a greater degree of attention, professionals who are consumers of chemical goods demonstrate a high degree of attention. That assessment, which is correct and which is not disputed by the applicant, must also be confirmed.

27 The Board of Appeal held, in paragraph 37 of the contested decision, that the goods covered by the mark applied for and the goods covered by the first earlier international mark were identical or similar.

28 While the applicant agrees with that assessment by the Board of Appeal as regards the goods covered by the mark applied for within Classes 1, 5 and 32, it disagrees that the goods covered by the mark applied for within Class 3 and those covered by the first earlier international mark could be regarded as identical or similar.

29 According to settled case-law, in assessing the similarity of the goods at issue, all the relevant factors relating to those goods should be taken into account. Those factors include, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see the judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

30 In the first place, as regards the goods covered by the mark applied for falling within Classes 1, 5 and 32, it is necessary to find that, as the Board of Appeal correctly held, the applicant acknowledges that those goods and the goods in the same classes covered by the first earlier international mark are identical or similar.

31 It must be held, first of all, that the goods covered by the mark applied for within Class 1, namely ‘chemical products’ and the ‘organic silicon for use in industry’, are identical to ‘chemical products’ covered by the first earlier international trade mark belonging within Class 1.

32 Next, as regards the goods covered by the mark applied for that belong within Class 5, on the one hand, ‘pharmaceutical preparations’, ‘medicated preparations for the care of skin and hair’ and ‘medicated toilet preparations’ are identical to ‘pharmaceutical products’ covered by the first earlier international mark, within Class 5. On the other hand, the goods ‘nutritional food supplements’ and ‘food supplements containing organic silicon’ covered by the first earlier international mark, have an average similarity with ‘pharmaceutical products’ covered by the first earlier international mark falling within Class 5, because their purpose, in common with pharmaceutical products, is to improve patients’ health, and they may be distributed by pharmacies.

33 Finally, the goods covered by the mark applied for that fall within Class 32, namely ‘Non-alcoholic drinks and preparations for making such drinks’, ‘drinks containing organic silicon and included in Class 32’ and ‘preparations containing organic silicon for use in making beverages’ must be held to be identical to the goods ‘beers’, covered by the first earlier international mark, falling within Class 32, because, as the Board of Appeal held, non-alcoholic drinks and drinks containing organic silicon include beers, which may, or may not, be alcoholic.

34 In the second place, as regards the goods covered by the mark applied for that fall within Class 3, the applicant disputes that those goods and the goods covered by the first earlier international mark falling within either Class 1, such as ‘chemical products’ or Class 5, such as ‘pharmaceutical products’, are similar.

35 First, the applicant submits that the Board of Appeal wrongly held, in paragraph 32 of the contested decision, that the ‘toilet preparations’, covered by the mark applied for, falling within Class 3, were similar to pharmaceutical products and chemical products covered by the first earlier international mark. In that regard, without it being necessary to rule on the plea of inadmissibility raised by EUIPO against that argument on the ground that it is not substantiated, it must be held that, as the Board of Appeal correctly and substantively found, in paragraph 31 of the contested decision, ‘toilet preparations’ can include chemical products, those products may coincide as regards their purpose, as they share the same distribution channels such as pharmacies, they target the same public, and they are often manufactured by the same companies.

36 Accordingly, contrary to the applicant’s argument, it must be held that ‘toilet preparations’ covered by the mark applied for in Class 3, are similar to an average degree to the pharmaceutical and chemical products covered by the first earlier international mark.

37 Furthermore, first, for the same reasons as those given in paragraph 35 above, it must be held that, as the Board of Appeal also correctly found, in paragraph 31 of the contested decision, ‘cosmetic preparations’, ‘preparations for the care of the skin and hair’, ‘anti-aging creams’, ‘dentifrices’, all containing organic silicon, and ‘preparations containing organic silicon for the care of the body, skin and hair’, covered by the mark applied for and as regards which the applicant has not raised any specific argument, are similar to a low degree to the pharmaceutical and chemical products covered by the first earlier international mark.

38 Second, it is important to note that, as EUIPO correctly submitted at the hearing, there is an average degree of similarity between ‘hair lotions’ covered by the mark applied for and ‘pharmaceutical products’ covered by the first earlier international mark (see, to that effect, the judgment of 13 May 2015, Harper Hygienics v OHIM — Clinique Laboratories (CLEANIC intimate), T‑363/13, not published, EU:T:2015:276, paragraph 42). Hair lotions can include chemical or pharmaceutical products, those products can overlap as regards their purpose, they use the same distribution channels such as pharmacies, they target the same public and they are often manufactured by the same companies.

39 Secondly, the applicant disputes that the ‘cleaning preparations’ ‘all containing organic silicon’, covered by the mark applied for, had a low degree of similarity with ‘pharmaceutical products’ and ‘chemical products’ covered by the earlier marks. It considers, in that regard, that the Board of Appeal wrongly based its assessment on the incorrect finding that ‘cleaning preparations’ included the goods ‘soaps’, which were similar to pharmaceutical products, whereas the mark applied for designated two distinct products that were, on the one hand, soaps, and, on the other hand, ‘cleaning preparations’, such as dishwasher liquids.

40 In that regard, it must, however, be noted that, even supposing, as the applicant submits, that the fact that the mark applied for designated ‘cleaning preparations’ as a category that excluded the goods ‘soaps’, because that mark also explicitly designates the latter, it remains the case that ‘cleaning preparations’ can include any product other than soaps intended, for example, for cleaning objects, they can be composed exclusively of ‘chemical products’, be sold through the same distribution channels, such as drug stores or supermarkets, and target the same public.

41 Accordingly, it must be held that ‘cleaning preparations’, covered by the mark applied for, are similar to an average degree to chemical products, covered by the first earlier international mark.

42 Thirdly, the applicant considers that, contrary to the Board of Appeal’s finding, ‘perfumery’ goods, ‘all containing organic silicon’, covered by the mark applied for, are not similar to a certain degree to pharmaceutical products. According to the applicant, the fact that one product can contain another does not mean that those products are similar.

43 In that regard, it must be held, as EUIPO points out, and as the applicant moreover acknowledges, the applicant has no interest in disputing the findings of the Board of Appeal relating to the likelihood of confusion between the marks at issue to the extent that the mark applied for covers perfumery goods containing silicon. Even if the Board of Appeal made an error of assessment in that regard, or breached its obligation to state reasons by not setting out the reasons supporting its assessment, the consequential partial annulment of the contested decision would be of no advantage to the applicant, which has obtained the rejection of opposition for ‘perfumery’ goods. That claim by the applicant must therefore be rejected as ineffective.

44 It therefore follows from all the foregoing considerations that, with the exception of ‘perfumery’ goods, in respect of which the applicant does not have an interest in disputing before the Court the assessments that the Board of Appeal made as regards those goods, the goods covered by the mark applied for in Class 3, are either identical or similar to an average degree to goods falling within Classes 3 and 5 of the first earlier international mark.

45 The applicant disputes the Board of Appeal’s finding that the signs at issue are similar.

46 At the outset, it must be recalled that there is nothing to prevent a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have a graphic form capable of creating a visual impression (see the judgment of 4 May 2005, Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).

47 As regards possible dominant or negligible elements in the signs at issue, the applicant argues, in its written submissions and in response to oral questions by the Court, that the phrase ‘silicium organique’ must either be ignored in the context of the comparison of the signs, or must not, as the Board of Appeal found, be considered to be dominant and distinctive, since it is descriptive of the goods covered by that mark.

48 First of all, it must be borne in mind that, according to the case-law, assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see the judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and 20 September 2007 in Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 42). That could be the case, in particular, where that component is capable alone of dominating the image of that mark which members of the relevant public retain, with the result that all the other components of the mark are negligible in the overall impression created by that mark (judgment of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).

49 In the present case, it is necessary to examine whether, as the applicant submits, first, the Board of Appeal erred by failing to ignore the phrase ‘silicium organique’ when comparing the signs at issue, and, second, if the Board of Appeal did not err in that regard, whether it gave appropriate weight to that expression when comparing the signs in question.

50 In the first place, as regards the question whether the Board of Appeal fell into error by taking the expression ‘silicium organique’ into consideration when comparing the signs at issue, it must be noted, first, that it is common ground that that expression would be understood by a part of the relevant public referred to in paragraph 25 above as being descriptive of the goods covered by those marks.

51 It is important to note in that regard that, when a word mark, made up of three or more words, includes several terms that are descriptive, the fact that certain word elements of a mark are descriptive is not on its own sufficient to conclude that those terms are negligible in the overall impression produced by that mark (see, to that effect, the judgments of 27 March 2014, Oracle America v OHIM — Aava Mobile (AAVA MOBILE), T‑554/12, not published, EU:T:2014:158, paragraph 34 and the case-law cited, and of 11 December 2014, Oracle America v OHIM — Aava Mobile (AAVA CORE), T‑618/13, not published, EU:T:2014:1053 paragraph 33).

52 Therefore, it is clear from the case-law set out in paragraph 51 above that the applicant’s submission that the Board of Appeal should have ignored the phrase ‘silicium organique’ when comparing the signs at issue, merely because it was descriptive of the goods that it covered, in the same way as it would be necessary to ignore the words ‘olive oil’ which might appear in a mark designating olive oil, must be rejected as unfounded.

53 In the second place, as regards the question whether the Board of Appeal gave appropriate weight to the expression ‘silicium organique’ when comparing the signs at issue, it must be noted in that regard that it found, in paragraph 40 of the contested decision, that particular weight must be given to the elements ‘silicium organique’ and ‘G5’ in the marks at issue. It held, in that regard, that the other elements of the marks were devoid of any distinctive character.

54 First of all, it must be recalled that, according to case-law, when a mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, since the average consumer will more easily refer to the goods in question by citing the name rather than describing the figurative element of the mark (judgment of 31 January 2012, Cervecería Modelo v OHIM — Plataforma Continental (LA VICTORIA DE MEXICO), T‑205/10, not published, EU:T:2012:36, paragraph 38). It follows that, in the mark applied for, even though the figurative sign occupies a central position in that sign, the relevant public would give greater weight to the word elements than to that figurative sign in order to refer to that mark.

55 In the second place, it must first be held, as EUIPO submits, that the most distinctive word element in the signs at issue is ‘G5’.

56 First of all, it must be noted that, as regards the part of the relevant public, as defined in paragraph 25 above, which understands the expression ‘silicium organique’, it is common ground that that phrase will be perceived as descriptive of the goods covered by the marks at issue. Whilst, therefore, it must be found that the relevant public would attach a low degree of significance to the phrase in question because of its descriptive character, it is nevertheless necessary to find first of all, as the Board of Appeal correctly held in paragraph 48 of the contested decision, without being challenged on that point by the applicant, that the beginning of the sign is the part to which the consumer usually attaches the greatest significance (see, to that effect, the judgment of 17 March 2004, El Corte Inglés v OHIM — Gonzalez Cabello et Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 83). Next, consumers naturally tend to shorten long marks in order to reduce them to the elements that they find easiest to refer to and remember (see, to that effect, the judgment of 9 April 2013, Italiana Calzature v OHIM — Vicini (Giuseppe BY GIUSEPPE ZANOTTI), T‑337/11, not published, EU:T:2013:157, paragraph 36). Finally, where a trade mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting the name of the mark than by describing the figurative element of the trade mark (see the judgment of 22 May 2012, Olive Line International v OHIM — Umbria Olii International (O·LIVE), T‑273/10, not published, EU:T:2012:246, paragraph 59 and the case-law cited). For those three reasons, it must be held that the relevant public would give attention to the expression ‘silicium organique’, notwithstanding its descriptive character.

57 Secondly, while it is true, as the Board of Appeal found in paragraph 40 of the contested decision, that the word element ‘G5’ appears to correspond to a technical abbreviation, it remains the case that there is nothing either in the case file before EUIPO or before the Court to indicate that that word element would be understood by the relevant public, which is comprised of both professionals and of the general public, as referring to the goods at issue. On the contrary, it is clear from the written submissions of the applicant and of EUIPO that they agree with the finding that that word element has a distinctive character in relation to the goods that those marks designate. The relevant public would therefore also give attention to the word element in question.

58 Thirdly, it must be held, as the Board of Appeal found and EUIPO submits, that the word elements other than ‘silicium organique’ and ‘G5’ which appear in the marks at issue, whilst not insignificant, will be considered to be secondary by the relevant public.

59 As regards, on the one hand, the mark applied for, the word element ‘LLR-G5’, which refers to the applicant’s company name, and which appears at the bottom of the sign in the mark applied for, appears in much smaller letters than the word element ‘G5’ which appears at the top of the sign in large letters.

60 As regards, on the other hand, the first earlier international mark, the relevant public will give less attention to the word element ‘Glycan 5-Si-Glycan-5-Si-G5’, although that element cannot be ignored, having regard to the place that it occupies in that sign. First of all, given its length, the relevant public will shorten that mark. Next, it must be noted, in that regard, that the applicant acknowledges that the word elements other than ‘silicium organique’ are ‘barely pronounceable or capable of being memorised’. Finally, in the case of the part of the relevant public with an average degree of attention in particular, that part of the relevant public will perceive, as the Board of Appeal correctly found, in paragraph 43 of the contested decision, that it was technical language referring to the chemical molecule in question, or mere repetitions of the word element ‘G5’, since the capital letter ‘G’ is the first letter of the word ‘Glycan’ and it is followed by the same number ‘5’ in the word element ‘Glycan 5-Si-Glycan-5-Si-G5’.

61 In the light of the considerations set out in paragraphs 54 to 60 above, it must be held that the Board of Appeal was fully entitled to find that the relevant public would give greater weight to the word elements ‘silicium organique’ and ‘G5’ in the marks at issue than to the other elements of those marks, without, however, ignoring the latter.

62 It follows from all the foregoing considerations that, contrary to the applicant’s submissions in writing and at the hearing, first, the Board of Appeal correctly assessed the marks at issue as a whole and, second, the relevant public as defined in paragraph 25 above will attach particular importance to the word elements ‘silicium organique’ and ‘G5’ in the signs at issue, whereas they will consider the other word and figurative elements of the signs at issue as being secondary, without, however, being insignificant.

63 The arguments raised by the applicant in that regard cannot invalidate the finding set out in paragraph 62 above.

64 First of all, to the extent that the applicant submits that the mark applied for is distinctive not because of its word elements but because of the distinctive character of its figurative element, that argument must be rejected. First, when examining the likelihood of confusion under Article 8(1)(b) of Regulation No 207/2009, which constitutes a relative ground for refusing registration, it is not appropriate to examine which elements of the mark applied for confer a sufficiently distinctive character enabling the mark to be registered, but whether there is a likelihood of confusion between that mark and an earlier mark. Second, and in any event, since the figurative element will be perceived by the relevant public as being descriptive, in that it represents a chemical molecule, that figurative element cannot be regarded as more distinctive than the word element ‘G5’, in respect of which it has been held, in paragraph 57 above, that the relevant public would not understand that that term refers to the goods covered by those marks.

65 Next, the applicant’s argument that in the mark applied for which has been registered as a Community mark the word element ‘LLR-G5’ is distinctive, in the same way as the word element ‘G5’ and unlike the word element ‘silicium organique’, must be rejected as unfounded. As held in paragraph 59 above, given that the word element ‘LLR-G5’ can be perceived as identifying the applicant’s company name and appears at the bottom of the sign in small letters, the relevant public will attach less significance to that than to the word elements ‘silicium organique’ and ‘G5’ which appear at the beginning of sign in large letters.

66 The Board of Appeal held, in essence, in paragraph 42 of the contested decision, that there was an average degree of visual similarity between the marks at issue. According to the Board of Appeal, although there were differences between the marks at issue, the elements that were likely to attract the most attention, namely the word elements ‘silicium organique’ and ‘G5’, were identical.

67 The applicant submits that the degree of similarity between the marks is, at most, low. According to it, whilst it is true that the word element ‘G5’ is common to the marks at issue, it remains the case that there are substantial differences between them.

68 Admittedly, it has been held in that regard in paragraph 62 above that the relevant public will attach particular importance to the word elements ‘silicium organique’ and ‘G5’ which are identical in the marks at issue, and not because of the single common element ‘G5’, as the applicant wrongly submits. Furthermore, it must be held, as the Board of Appeal found in paragraph 42 of the contested decision, that in the signs at issue those word elements appear at the beginning of the sign in the same order, in such a way that the relevant public will notice them immediately.

69 However, the elements other than the word elements ‘silicium organique’ and ‘G5’ which appear, on the one hand, in the mark applied for, namely the word element ‘LLR-G5’ and the figurative element, and, on the other hand, in the first earlier international mark, namely the word element ‘Glycan 5-Si-Glycan-5-Si-G5’, which cannot be ignored, diminish the similarity between the two signs. Accordingly, the Board of Appeal was fully entitled to find that there was an average degree of visual similarity between the marks at issue.

70 The applicant’s argument that it registered the mark G5 before the first earlier international mark was registered must be rejected as ineffective in the context of the comparison of the signs at issue. As EUIPO correctly observes, the fact that the applicant had registered the mark G5 before the first earlier international mark has no effect on the finding that there is an average degree of visual similarity between the marks at issue owing, in particular, to the identity of the word elements ‘silicium organique’ and ‘G5’ in the marks at issue and their significance in those signs.

71 The applicant submits that the Board of Appeal wrongly found, in paragraph 43 of the contested decision, that there was a high degree of phonetic similarity between the marks at issue. According to it, the relevant public will identify the mark applied for by the distinctive elements, namely the word elements ‘LLR-G5’or ‘G5’ and not by its descriptive elements, namely the word elements ‘silicium organique’.

72 In that regard, it should be recalled, first, that the word elements ‘silicium organique’ and ‘G5’, which are identical in the marks at issue, appear at the beginning of the sign and in the same order. Second, even if the other elements of, on the one hand, the mark applied for, namely the word element ‘LLR-G5’ and, on the other hand, in the first earlier international mark, namely the word element ‘Glycan 5-Si-Glycan-5-Si-G5’, contain a number of distinct syllables and have different sounds overall, the applicant has not proven that the Board of Appeal was incorrect to find, in paragraph 43 of the contested decision, that the relevant consumer will concentrate on the first word elements of the mark which he will find easy to identify and remember. In that regard, it must be emphasised that the applicant acknowledges that the word elements ‘LLR-G5’ and ‘Glycan 5-Si-Glycan-5-Si-G5’ are barely pronounceable or capable of being memorised.

73 Accordingly, it must be held that the Board of Appeal did not err in finding that there was a high degree of phonetic similarity between the marks at issue.

74 The Board of Appeal held, in paragraph 44 of the contested decision, that the marks at issue were identical, to the extent that the relevant public would understand the phrase ‘silicium organique’ as designating a chemical substance.

75 The applicant considers that the marks at issue are conceptually completely different owing to the fact that, first, in essence, the phrase ‘silicium organique’ is descriptive of the goods that it designates and, second, the other word elements of the marks do not have any apparent meaning.

76 In that regard, it suffices to observe that, first, it is common ground that the expression ‘silicium organique’ will be understood as referring to chemical molecules by the part of the relevant public identified in paragraph 25 above. Contrary to the applicant’s submissions, the fact that that phrase refers to goods that the marks at issue designate has no impact on the finding that those marks refer to an identical concept for the relevant public. Second, the other word elements of those marks, namely the word element ‘LLR-G5’ of the mark applied for and the word element ‘Glycan 5-Si-Glycan-5-Si-G5’ of the first earlier international mark, either have no particular meaning or also refer to such chemical molecules.

77 Therefore, the Board of Appeal was fully entitled to find that the marks at issue were conceptually identical since, in any case, they refer to chemical molecules.

78 It follows from all the foregoing considerations that the marks at issue have an average degree of visual similarity, a high degree of phonetic similarity and are conceptually identical.

79 The applicant considers, in essence, that an examination of all the relevant factors leads to the conclusion that there is no likelihood of confusion between the marks at issue.

80 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and 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 marks, and vice versa (judgments of 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame) and Others, T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

81 In the present case, since the goods at issue are either identical or have an average degree of similarity (see paragraph 44 above) and the signs at issue, assessed overall, have an average degree of visual similarity, a high degree of phonetic similarity, and are conceptually identical (see paragraph 78 above), owing, in particular, to the fact that the attention of the relevant public will be drawn to the word elements ‘silicium organique’ and ‘G5’, which are identical in the marks at issue (see paragraph 59 above), there is a likelihood of confusion between the marks at issue for the goods at issue in the mind of the relevant public in general and, in particular, in the mind of the part of the relevant public having an average degree of attention, because it could be believed that the goods covered by the marks at issue came from the same undertaking or, in some cases, from economically-linked undertakings. The Board of Appeal did not therefore make any error of law in finding, in the contested decision, that there was such a risk.

82 The arguments advanced by the applicant are not capable of invalidating the conclusion set out in paragraph 81 above.

83 First, in so far as the applicant submits that the Board of Appeal erred in finding that there was a likelihood of confusion, even though the signs at issue were not at all similar and certain goods covered by the signs at issue were different, that argument must be rejected as unfounded. As has been found in paragraph 81 above, on the one hand, the signs at issue, assessed as a whole, have an average degree of visual similarity, a high degree of phonetic similarity, and are conceptually identical, and, on the other hand, the goods covered by the marks at issue are either identical or have a certain degree of similarity.

84 Secondly, in so far as the applicant submits that, when examining the similarity between the marks and between the goods at issue, the Board of Appeal should not merely have made general observations as to the degree of similarity between the marks at issue, but should have graded that similarity on a scale of 0 to 10, such an argument must be rejected as unfounded. First, by indicating that the signs at issue, assessed as a whole, have an average degree of visual similarity, a high degree of phonetic similarity, and are conceptually identical, and that the goods covered by the marks at issue are either identical or have a certain degree of similarity, the Board of Appeal assessed to the requisite legal standard the degree of similarity between the marks at issue. Second, there is no obligation on the Board of Appeal to evaluate the similarity between the two marks on a scale of 0 to 10.

85 Thirdly, the applicant’s argument that the Board of Appeal should have held that the marks at issue and the goods covered by those marks had, at most, a low degree of similarity, must be rejected for the reasons set out in paragraphs 45 to 78 above.

86 Fourthly, as regards the applicant’s argument that the first earlier international mark had a low degree of distinctiveness and that the relevant public would have an average or high degree of attention, it must be held that those arguments do not throw into question the assessment set out in paragraph 81 above, namely that there is a likelihood of confusion between the marks at issue for the goods at issue, having regard to the high degree of similarity of the marks and that of the goods covered by them.

87 Fifthly, in so far as the applicant submits that it registered as a mark each of the word elements of the mark applied for other than the phrase ‘silicium organique’, such an argument must be rejected as ineffective. Even if it held such rights, that fact would have no influence, as EUIPO correctly submitted, on the assessment of the risk of confusion between the marks at issue.

88 It follows from all the foregoing considerations that the Board of Appeal was fully entitled to find that there was a likelihood of confusion between the mark applied for and the first earlier international mark in respect of the goods at issue and, therefore, that the first plea in law relied on by the applicant must be rejected as unfounded. In those circumstances, there is no need to examine whether there is also a likelihood of confusion between the mark applied for and the second earlier international mark.

89 The applicant claims that the Board of Appeal infringed its obligation to state reasons. First, it alleges that the Board of Appeal failed to rule on the existence of a likelihood of confusion between the mark applied for and the second earlier word mark. Secondly, it alleges that the Board of Appeal failed to set out the reasons for its view that the opposition should be upheld in respect of all the goods covered by the mark applied for, with the exception of ‘perfumery, all containing organic silicon’.

91 In the first place, in so far as the applicant submits that the Board of Appeal breached its duty to state reasons by failing to rule on the existence of a likelihood of confusion between the mark applied for and the second earlier international mark, that claim must be rejected as being ineffective. Given that the Board of Appeal found that there was a likelihood of confusion between the mark applied for and the first earlier international mark, an examination of whether there was also any likelihood of confusion between it and the second earlier international mark had become devoid of purpose. The assessment of the likelihood of confusion with the latter mark would not have made it possible to invalidate the finding that the mark applied for could not, in any event, be registered owing to the likelihood of confusion between the mark applied for and the first earlier international mark.

92 In the second place, in so far as the applicant submits that the Board of Appeal breached its duty to state reasons in that the contested decision does not make it possible to understand the reasons why it held that there was no likelihood of confusion between the marks at issue to the extent that the mark applied for covers perfumery goods all containing silicon, it must be recalled that, as stated in paragraph 43 above and as EUIPO submitted in particular at the hearing, the applicant has no interest in challenging the findings of the Board of Appeal in that respect. Even if the Board of Appeal were to have breached its obligation to state reasons, the consequential partial annulment of the contested decision would be of no advantage to the applicant, which has obtained the rejection of opposition for the goods ‘perfumery, all containing organic silicon’. That plea must therefore be rejected as ineffective.

93 In the light of the foregoing, it is necessary to reject the second plea in law relied on by the applicant as being in part ineffective and in part inadmissible.

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.

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

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> LLR-G5 v EUIPO - Glycan Finance (SILICIUM ORGANIQUE G5 LLR-G5) (Judgment) [2016] EUECJ T-539/15 (28 September 2016) URL: http://www.bailii.org/eu/cases/EUECJ/2016/T53915.html Cite as: [2016] EUECJ T-539/15

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