Bial-Portela v OHMI - Isdin (ZEBEXIR) (Judgment) [2015] EUECJ T-366/11 (03 March 2015)

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(Community trade mark — Opposition proceedings — Application for Community word mark ZEBEXIR — Earlier Community word mark ZEBINIX — Relative grounds for refusal — Article 8(1)(b) of Regulation (EC) No 207/2009)

Bial-Portela & C^aSA, established in São Mamede do Coronado (Portugal), represented by B. Braga da Cruz and J. Pimenta, lawyers,

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

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

Isdin, SA, established in Barcelona (Spain), represented by P. López Ronda, G. Macias Bonilla and G. Marín Raigal, lawyers,

ACTION against the decision of the First Board of Appeal of OHIM of 6 April 2011 (Case R 1212/2009-1), relating to opposition proceedings between Bial-Portela & C^a SA and Isdin, SA,

composed of H. Kanninen, President, I. Pelikánová (Rapporteur) and E. Buttigieg, Judges,

having regard to the fact that none of the parties has requested a hearing to be arranged, following the invitation of the General Court in that regard, and having therefore decided, after hearing the report of the Judge-Rapporteur, to proceed to judgment without a hearing,

1 On 4 April 2008, the intervener, Isdin SA (‘Isdin’), filed an application for a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1). The application concerned the registration of the word sign ZEBEXIR.

2 The goods in respect of which registration was sought are in classes 3 and 5 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended, and correspond to the following description:

– class 3: ‘Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; (abrasive preparations) soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices’;

– class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides’;

3 The Community trade mark application was published in Community Trade Marks Bulletin No 24/2008 of 16 June 2008.

4 On 9 September 2008, Bial-Portela & C^a SA (‘the applicant’ or ‘Bial-Portela’) filed a notice of opposition to the registration of the mark applied for on the basis of Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).

5 The opposition was based on the earlier Community word mark ZEBINIX, filed on 28 October 2003 and registered on 14 March 2005 for the goods and services in classes 3, 5 and 42 corresponding, for each of those classes, to the following description:

– Class 3: ‘Bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices’;

– Class 5: ‘Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides’;

– Class 42: ‘Scientific and technological services and research and design relating thereto, industrial analysis and research services’.

6 The opposition was directed against all the goods in respect of which registration had been applied for.

7 By decision of 3 September 2009, the Opposition Division rejected the opposition for all the goods, finding that there was no likelihood of confusion between the signs within the meaning of Article 8(1)(b) of Regulation No 207/2009.

8 On 13 October 2009, 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.

9 By decision of 6 April 2011 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the applicant’s opposition in its entirety. In particular, it found that the relevant public is composed of all European Union consumers and that the goods designated by the earlier mark and those designated by the mark applied for were identical. It was of the opinion that, notwithstanding the common elements, in particular the first syllable and the first three letters, the global phonetic and visual impressions produced by the signs at issue were different. The Board of Appeal considered that, as the conceptual comparison did not influence the assessment of the similarity of the signs, the visual and phonetic differences were sufficiently relevant to exclude a likelihood of confusion, even for identical goods.

10 By application lodged at the Registry of the General Court on 6 July 2011, Bial-Portela brought an action for annulment of the contested decision.

11 In support of its action, Bial-Portela raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

12 By judgment of 9 October 2012 in Bial-Portela v OHIM — Isdin (ZEBEXIR) T‑366/11, ECR, EU:T:2012:527, ‘the General Court’s first judgment’), the General Court, upholding the single plea, annulled the contested decision. It ordered OHIM to bear its own costs and to pay those incurred by Bial-Portela, and ordered Isdin to pay its own costs.

13 By application lodged at the Registry of the Court of Justice on 18 December 2012, Isdin brought an appeal seeking to have the General Court’s first judgment set aside.

14 By judgment of 17 October 2013, Isdin v Bial-Portela, C‑597/12 P, ECR, EU:C:2013:672, (‘the judgment on appeal’) the Court found a failure to state reasons in the General Court’s first judgment with regard to the finding of a likelihood of confusion relating to certain goods designated by the marks at issue.

15 Accordingly, the Court set aside the General Court’s first judgment and, declaring that the state of the proceedings did not permit the Court to give final judgment, referred the case back to the General Court, reserving the costs.

17 OHIM and Isdin lodged submissions within the period prescribed as to the further steps to be taken in the proceedings, OHIM merely referring to its response.

18 Bial-Portela lodged no submissions within the period prescribed by the General Court as to the further steps to be taken in the proceedings.

19 Upon hearing the report of the Judge-Rapporteur, the General Court opened the oral procedure.

20 On 14 November 2014, the General Court requested the parties, in the context of a measure of organisation of procedure, whether, taking account of the circumstances of the case, they wished it to arrange a hearing. None of the parties replied within the prescribed period.

Forms of order submitted by the parties in the proceedings after referral back to the General Court

– order the applicant to pay the costs incurred in the proceedings before OHIM, the costs incurred before the Court of Justice and those before the General Court.

24 The judgment on appeal having wholly set aside the first judgment of the General Court, the General Court must once again give a ruling on the case in its entirety.

25 OHIM claims that the applicant’s second head of claim is inadmissible in that it seeks to have the General Court issue directions to OHIM.

26 It should be recalled in that regard that, in accordance with Article 65(6) of Regulation No 207/2009, OHIM is required to take the necessary measures to comply with the judgment of the Courts of the European Union. Accordingly, it is not for the Court to issue orders to OHIM (judgment of 3 July 2003 in Alejandro v OHIM — Anheuser-Busch (BUDMEN) T‑129/01, ECR, EU:T:2003:184, paragraph 22). It is for OHIM to draw the appropriate conclusions from the operative part of judgments of the Court and the grounds on which they are based. The applicant’s second head of claim, seeking an order that OHIM refuse registration of the mark applied for, must therefore be dismissed as inadmissible.

27 Bial-Portela raises a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

28 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 must not 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.

29 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

30 In the present case, with regard to the relevant public, the Board of Appeal found that it was composed of the average consumer in the European Union, who is reasonably well informed and reasonably observant and circumspect. It is appropriate to endorse that finding, which is not disputed by the parties. All the goods in Classes 3 and 5 designated by the marks at issue are directed at the general public, with the sole exception of ‘material for stopping teeth, dental wax’ in class 5 and designated by the two marks, which are directed at a professional public. However, the general public being considered to be less informed and observant than the professional public, it is the level of attention of the former that must be taken into account.

31 Concerning the similarity of the goods at issue, the Board of Appeal was correct in finding that all the goods in Classes 3 and 5 designated by the mark applied for are also included in the list of goods designated by the earlier mark (see paragraphs 2 and 5 above). This conclusion was not disputed by any of the parties. Consequently, the Board of Appeal’s finding that the goods designated by the marks at issue are identical must be confirmed.

32 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by the signs, account being taken of, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).

33 In the contested decision, the Board of Appeal found that, despite the first three letters of the signs at issue being identical and the presence of some common letters in the other parts of those signs, the overall visual impression was sufficiently different. In particular, it noted that not only was the element ‘bin’ in the middle of the earlier mark different from the element ‘bex’ in the middle of the mark applied for, but that, furthermore, the earlier mark ended with the letter ‘x’, which is visually striking, whereas the mark applied for ended with the letter ‘r’.

34 Bial-Portela claims that the first part of a mark makes the most impression on the consumer. In the present case, the mark applied for reproduces the first part of the earlier mark, which dominates the visual impression of both marks. Furthermore, of the seven letters which form the marks at issue, five are identical.

35 OHIM, supported by Isdin, disputes those arguments, and endorses, in essence, the findings of the Board of Appeal.

36 In that context, it must be pointed out, as the applicant rightly observed, that the consumer normally attaches more importance to the first part of words (see, to that effect, judgments of 17 March 2004 in El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, ECR, EU:T:2004:79, and of 16 March 2005 in L’Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, ECR, EU:T:2005:102, paragraphs 64 and 65). As that rule ‘normally’ applies and is, therefore, subject to exceptions, it is not called into question by the fact, relied on by OHIM, that the Court has found in certain cases, in respect of relatively short word signs, that the central elements are as important as the elements at the beginning and end of the sign (see judgment of 20 April 2005 in Krüger v OHIM — Calpis (CALPICO), T‑273/02, ECR, EU:T:2005:134, paragraph 39 and the case-law cited).

37 It should therefore be examined whether, in the present case, the visual similarity created by the common first part of the signs at issue is cancelled out by the differences created by the other parts of those signs.

38 Contrary to what the Board of Appeal found, the visual differences created by the central and end parts of the signs at issue, namely, the groups of letters ‘inix’ in the earlier mark and ‘exir’ in the mark applied for, are not sufficient to cancel out the impression of similarity created by the common first part ‘zeb’ of the signs at issue. It is certainly true, as OHIM claims, that those groups of letters are different as regards the order of the vowels as well as that of the consonants and as regards the final letter. However, the two groups of letters contain the letters ‘i’ and ‘x’. Furthermore, it must be stated that the common letter ‘x’, which is visually striking, reinforces the similarity created by the common first part of the two signs, notwithstanding the fact that it is not situated in the same position in each of the signs at issue.

39 It follows that, contrary to the Board of Appeal’s finding, the signs at issue, taken as a whole, are visually similar. Consequently, Bial-Portela’s claim in that regard must be accepted.

40 As regards the phonetic comparison, the Board of Appeal found that the overall sounds of the signs are different, for only the first syllable ‘ze’ of the three syllables in each sign is the same in the two marks, whereas the other syllables are different.

41 Bial-Portela claims that, when the signs at issue are pronounced, the stress is placed on their common first part and that the other parts of the signs easily go unnoticed because of their weak sound.

42 OHIM, supported by Isdin, disputes those arguments, emphasising in particular that in several European Union languages the stress will be placed on the last syllables of the signs at issue.

43 First of all, the Court considers that the question regarding which syllables the consumer will stress when they pronounce the signs at issue is not relevant for the resolution of this case, since the reply is likely to vary depending on the languages in which those signs are pronounced, as OHIM correctly argues.

44 Next, it must be stated, first, that the marks are each composed of three syllables, namely ‘ze-bi-nix’ for the earlier mark and ‘ze-be-xir’ for the mark applied for. Second, the first syllable is identical in the two marks at issue. Third, the second syllables ‘be’ and ‘bi’ of the marks at issue are different but close in their sound. Fourth, the third syllables ‘xir’ and ‘nix’ of the marks at issue are distinct but contain the common letters ‘i’ and ‘x’, the second of which has a clearly recognisable sound. Fifth, far from having a weak sound as the applicant claims, the sounds ‘eks’ in the middle of the mark applied for and ‘iks’ at the end of the earlier mark are capable of attracting consumers’ attention. However, the phonetic impressions produced by those two sounds being very similar, those sounds cannot contribute decisively to the creation of a phonetic difference between the signs at issue.

45 In conclusion, it must be stated that, assessed globally, the phonetic differences between the marks at issue do not preclude some similarity in that respect.

46 It follows that the signs at issue have a certain level of phonetic similarity. Consequently, the Board of Appeal was wrong to find that the overall sound of those two signs is different. The applicant’s claim in that regard must, therefore, be upheld.

47 As regards the conceptual similarity, the Board of Appeal was correct in finding that neither sign has a meaning in the relevant languages and that the conceptual comparison does not therefore influence the comparison of the signs. Moreover, the parties do not challenge that finding.

48 In the light of the foregoing, it must be held that, as regards the examination of the visual and phonetic similarity between the mark applied for and the earlier mark, the Board of Appeal made errors that affect the degree of similarity found.

49 However, it is still necessary to verify whether those errors had an influence on the Board of Appeal’s global assessment of the existence of a likelihood of confusion. For the purposes of that verification, it must be noted that the marks at issue are visually similar to an average degree and that they have a certain level of phonetic similarity.

50 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 the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and of 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74). It should be borne in mind, in particular, that the consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (see judgment of 30 June 2004 in BMI Bertollo v OHIM — Diesel (DIESELIT), T‑186/02, ECR, EU:T:2004:197, paragraph 38 and the case-law cited).

51 In the present case, the Board of Appeal found that, despite the common elements of the marks, their phonetic and visual differences were sufficiently relevant to exclude any likelihood of confusion, even for identical goods.

52 Contrary to what the Board of Appeal found, the signs at issue have an average degree of visual similarity and a certain level of phonetic similarity. In those circumstances, the slight differences between the marks at issue are not sufficient to offset, in the mind of the relevant public, the fact that the goods covered by those marks are identical. On the contrary, the relevant public, when confronted with the signs at issue, of which it may perhaps have an imperfect recollection, could well believe that the goods designated by the marks at issue come from the same undertaking or economically linked undertakings. Therefore, it must be held that there is a likelihood of confusion between the mark applied for and the earlier mark.

53 Therefore, the applicant’s single plea in law must be accepted and the contested decision annulled.

54 In the judgment on appeal, the Court of Justice reserved the costs. It is therefore for the General Court to rule in this judgment on all the costs relating to the various proceedings, in accordance with Article 121 of the Rules of Procedure.

55 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM has been unsuccessful, it must be ordered to pay the applicant’s costs, in accordance with the form of order sought by the applicant. Since the intervener has been unsuccessful, it must be ordered to bear its own costs.

1. Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 6 April 2011 (Case R 1212/2009-1).

2. Orders OHMI to bear its own costs and to pay those incurred by Bial-Portela & C^a SA.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Bial-Portela v OHMI - Isdin (ZEBEXIR) (Judgment) [2015] EUECJ T-366/11 (03 March 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T36611.html Cite as: [2015] EUECJ T-366/11, ECLI:EU:T:2015:129, EU:T:2015:129

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