Infocit v OHMI - DIN (DINKOOL) (Judgment) [2015] EUECJ T-621/14 (24 June 2015)

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(Community trade mark — Opposition proceedings — Application for Community word mark DINKOOL — Earlier international figurative mark DIN — Earlier national business identifier DIN — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

Infocit — Prestação de Serviços, Comércio Geral e Indústria, Lda, established in Luanda (Angola), represented by A. Oliveira, lawyer,

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

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

DIN — Deutsches Institut für Normung eV, established in Berlin (Germany), represented by M. Bagh, lawyer,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 4 June 2014 (Case R 1312/2013-2) concerning opposition proceedings between DIN — Deutsches Institut für Normung eV and Infocit — Prestação de Serviços, Comércio Geral e Indústria, Lda,

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

having regard to the application lodged at the Registry of the General Court on 14 August 2014,

having regard to the response of OHIM lodged at the Registry on 13 November 2014,

having regard to the response of the intervener lodged at the Registry on 18 November 2014,

having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur and pursuant to Article 135a of the Rules of Procedure of the General Court, to give a ruling without an oral procedure,

1 On 2 December 2011 the applicant Infocit — Prestação de Serviços, Comércio Geral e Indústria, Lda, filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

2 The mark in respect of which registration was sought is the word sign DINKOOL.

3 The goods in respect of which registration was sought are in Classes 1, 2, 3, 6, 7, 12, 16, 20 and 21 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: ‘Acids; chemicals (industrial); alkaline metals; alkaline salts’;

– 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 7: ‘High-pressure cleaning apparatus; steam cleaners; electric cleaning machines and apparatus’;

– Class 16: ‘Paper; toilet paper, paper napkins, tissues, industrial rolls (bench rolls), hospital paper rolls’;

– Class 20: ‘Furniture; mirrors (looking glasses); picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastic; tanks (non-metallic); containers and plastic tanks; plastic containers for packaging; containers of plastic for waste’;

– Class 21: ‘Household or kitchen utensils and containers (not of precious metal or coated therewith); sponges, brushes (other than paint brushes); articles for cleaning purposes steel-wool; hand operated cleaning instruments, cleaning cloths, cloths for cleaning the floor; brooms, carpet sweepers, mops; gloves for household purposes; demijohns; toilet utensils; utensils and household containers and for sanitary purposes, namely pads, cleansing cotton, fabric cleaning mitts, cleaning pads, mop buckets, buckets having wringers for mops; paper towel dispensers; toilet paper dispensers; hand lotion dispensers; soap dishes; toothbrush holders, holders for glasses, toilet-paper holders; waste disposal bins and garbage cans; plastic refuse containers; soap dispensers, paper towel dispensers, tissue dispensers’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 25/2012 of 6 February 2012.

5 On 12 March 2012 the intervener DIN — Deutsches Institut für Normung eV filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for, in respect of the goods referred to in paragraph 3 above.

6 The opposition was based, first, on international trade mark registration No 229048 of the figurative mark producing its effects in several Member States of the European Union, including Germany, the Member State in which reputation of the registration was claimed for ‘printed matter, namely printed technical standards’, represented below:

7 That mark covers goods in Classes 1 to 34 corresponding, for each of those classes, to the following description:

– Class 1: ‘Food preserving products; chemical products for industry, science and photography, extinguishing products, tempering substances, solders, mineral raw materials; soil fertilizers; resins, adhesive agents, finishes, tanning materials; raw and semi-processed materials for manufacturing paper; combusting preparations’;

– Class 2: ‘Dyestuffs, colorants, metal sheets; varnishes, lacquers, mordants, resins; rust protection agents; wood preserving materials’;

– Class 3: ‘Polishes, substances for glazing and preserving leather, floor wax; bath salts; wax; perfumery, cosmetics, essential oils, soaps, washing and bleaching substances, laundry starch, starch preparations, laundry blueing, stain removing substances, cleaning and polishing substances (except for leather), abrasives’;

– Class 4: ‘Substances for preserving leather; fuels; wax, lighting materials, industrial oils and greases, lubricants, benzine; candles, night lights, lamp wicks; combusting preparations’;

– Class 5: ‘Medicines, chemical products for medical and sanitary use, pharmaceutical drugs and preparations, plasters, surgical dressings, herbicides and preparations for destroying vermin, disinfectants; dental impression materials, dental filling materials; mineral water salts and bath salts; bandages for medical use; dietetic foodstuffs’;

– Class 6: ‘Mineral raw materials; base, rough or semi-wrought metals, horseshoes and farrier’s nails; enamelled and tinned products; building components for railway superstructures, small ironware, locksmithing and blacksmithing pieces, closing devices, fittings of metal, articles made of metallic thread, goods made of sheet metal, anchors, chains, balls and steel balls, bells, hooks and eyelets, safety boxes and chests, mechanically shaped metals, laminated and cast construction materials, machine cast iron; metal cables; objects made of nickel, aluminium, German silver, Britannia metal and other alloys; lathe-turned, sculptured and braided articles; flexible tubes; wallpapering accessories; signboards and signboard plates; works of art’;

– Class 7: ‘Manufactured objects for technical use, made of rubber and rubber substitutes; machines, machine parts, transmission belts’;

– Class 8: ‘Cutlery, tools, scythes, sickles, edged weapons; manufactured objects for technical use, made of rubber and rubber substitutes; barn, gardening and agricultural tools’;

– Class 9: ‘Asbestos products; manufactured objects for technical use, made of rubber and rubber substitutes; life-saving apparatus, fire-extinguishers; physics, chemical, optical, surveying, nautical, electrical engineering, weighing, signalling, checking and photographic apparatus and instruments, measuring instruments; automatic vending machines, signboards’;

– Class 10: ‘Surgical and medical as well as sanitary apparatus and instruments, prostheses, eyes, teeth’;

– Class 11: ‘Apparatus and utensils for lighting, heating, cooking, refrigerating, drying and ventilating, water pipes, bathroom and toilet installations’;

– Class 12: ‘Land, air and water vehicles, automobiles, velocipedes, automobile and velocipede accessories, vehicle parts; manufactured objects for technical use, made of rubber and rubber substitutes; transmission belts’;

– Class 14: ‘Precious metals, objects made of gold, silver and other alloys, jewellery and fashion jewellery; turned or carved objects; works of art; clock and watchmaking articles (clocks, watches) and parts thereof’;

– Class 15: ‘Musical instruments, parts and strings for said instruments’;

– Class 16: ‘Paintbrushes; glues; paper, cardboard, products made of paper and cardboard, raw and semi-processed material for making paper; photographic products and printed matter, playing cards, signboards and signboard plates, letters, printing blocks, works of art; writing, drawing, painting and modelling articles, marking chalk, office and counter utensils (except furniture), teaching media’;

– Class 17: ‘Mineral raw materials; packing and stopping materials, heat retaining materials, insulating materials, asbestos products; cushioning materials used by mattress makers, packaging materials; raw materials and manufactured objects for technical use, made of rubber and rubber substitutes; flexible tubes; raw materials and objects made of mica’;

– Class 18: ‘Fittings for harnesses, harnesses; skins, gut, leather, furskins; umbrellas and parasols, walking sticks, travel goods; saddlery, leatherware, leather articles’;

– Class 19: ‘Mineral raw materials; asbestos products; manufactured objects for technical use, made of rubber and rubber substitutes; sculpted objects; works of art; raw materials and objects of clay; natural and artificial stones, cements, lime, gravel, plaster, pitch, asphalt, tar, reed mats, roofing paper, mobile homes, chimneys, building materials’;

– Class 20: ‘Objects made of wood, bone, cork, horn, shell, whalebone, ivory, mother-of-pearl, amber, meerschaum, celluloid and substitutes of all these materials; lathe-turned, sculptured and braided articles, picture frames, dressmakers’ and hairdressers’ dummies; furniture, mirrors, upholstered furniture, beds, coffins; signboards and signboard plates, works of art’;

– Class 21: ‘Cooking utensils; silks, bristle, hair for brushes, brushware, combs, sponges, toilet utensils, cleaning equipment, steel wool; enamelled and tinned products; manufactured objects for technical use, made of rubber and rubber substitutes; turned or carved objects; household and kitchen utensils, barn, gardening and agricultural tools; signboards and signboard plates, works of art; raw materials and objects made of porcelain, clay and glass’;

– Class 22: ‘Rope-making goods, nets; textile fibres, cushioning materials used by mattress makers, packaging materials; wallpapering accessories; tents, sails, bags’;

– Class 24: ‘Linen; raw and semi-processed material for making paper; canvases, oilcloth, blankets, curtains, flags; textiles, knitted fabrics, felt’;

– Class 25: ‘Headgear, fashion goods; footwear; stockings, socks, knitted articles; clothing, lingerie, corsets, neckties, braces, gloves; belt articles’;

– Class 26: ‘Hairdressing headwear, hairstyles (hairdos), fashion goods, artificial flowers; pins and needles, hooks and eyelets; lace trimmings; braided articles; wallpapering accessories; passementerie, ribbons, edgings, buttons, lace, embroidery’;

– Class 28: ‘Fish hooks; skates; Christmas tree trimmings, billiard cue chalk; games, toys and playthings, sports and gymnastics devices’;

– Class 29: ‘Fishing and hunting fare; meat, fish, meat extracts, preserves, vegetables, fruits, jellies; eggs, milk, butter, cheeses, margarine, edible oils and fats’;

– Class 30: ‘Coffee, coffee substitutes; tea, sugar, syrup, honey, flours, appetizers, pasta, condiments, spices, sauces, vinegar, mustard, cooking salt; cocoa, chocolate, sugar confectionery, sugar confectionery and pastry products, yeast, baking powder; ice’;

– Class 31: ‘Agricultural, silvicultural, horticultural, animal raising and fishing products; vegetables, fruits; malt, fodder; raw and semi-processed material for making paper’;

– Class 34: ‘Matches; raw tobacco, manufactured tobacco, cigarette paper’.

8 The opposition was based, secondly, on the earlier non-registered sign DIN used in the course of trade in Germany for the development of norms, standards and technical rules as a service to industry, the State and society as a whole.

9 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b), (4) and (5) of Regulation No 207/2009.

11 On 12 July 2013 the intervener filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

12 By decision of 4 June 2014 (‘the contested decision’), the Second Board of Appeal of OHIM upheld the intervener’s appeal, annulled the Opposition Division’s decision and rejected the Community trade mark application. In particular, the Board of Appeal found, in paragraphs 17 and 18 of the contested decision, that the relevant territory was Germany and that the relevant public consisted, first, of the general public, who were reasonably well-informed, observant and circumspect for the majority of the goods concerned, but whose level of attention was somewhat higher for the goods in classes 1, 2, 7 and 12, and, secondly, of professionals with a higher level of attention. As regards the comparison of the goods, the Board of Appeal found essentially, in paragraphs 24 and 25 of the contested decision, that the Opposition Division’s comparison relating to classes other than classes 13, 15, 23 and 25 had not been challenged, and that the goods were partly identical and partly similar. As regards the comparison of the signs, it then found, in paragraphs 26 to 29 of the contested decision, that the signs were visually similar and had a certain degree of phonetic similarity, but were conceptually different. However, the extent of that conceptual difference was relativised by the Board of Appeal because of the laudatory nature of the word ‘kool’ in the contested sign and the awareness of that word by German consumers, who would understand it as a misspelling of ‘cool’. Finally, the Board of Appeal found, in paragraphs 30 to 32 of the contested decision, that there was a likelihood of confusion between the opposing signs, and that the opposition based on Article 8(1)(b) of Regulation No 207/2009 was well founded.

16 It is necessary to begin by considering the applicant’s argument that genuine use of the earlier mark has not been proved. In support of its application claiming infringement of Article 8(1)(b) of Regulation No 207/2009, the applicant submits that the intervener does not market any goods but at most certifies them, that there are no goods bearing the mark DIN, and that the intervener cannot therefore rely on the protection of the earlier mark.

17 In this respect, it must be recalled that the purpose of actions brought before the Court under Article 65(2) of Regulation No 207/2009 is to obtain a review of the lawfulness of decisions of the Boards of Appeal. In the context of that regulation, pursuant to Article 76 of the regulation, that review must be carried out in the light of the factual and legal context of the dispute as it was brought before the Board of Appeal (see judgment of 1 February 2005 in SPAG v OHIM — Dann and Backer (HOOLIGAN), T‑57/03, ECR, EU:T:2005:29, paragraph 17 and the case-law cited). It follows that the Court may not annul or alter a decision against which an action has been brought on grounds which come into existence subsequent to its adoption (judgments of 11 May 2006 in Sunrider v OHIM, C‑416/04 P, ECR, EU:C:2006:310, paragraph 55, and 13 March 2007 in OHIM v Kaul, C‑29/05 P, ECR, EU:C:2007:162, paragraph 53).

18 Moreover, in accordance with Article 135(4) of the Rules of Procedure, the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal.

19 Thus, where the question of proof of genuine use of the earlier trade mark was not raised before the Board of Appeal, which did not therefore rule on that question, a claim to that effect raised before the Court must be declared inadmissible (see, to that effect, judgment of 7 November 2007 in NV Marly v OHIM — Erdal (Top iX), T‑57/06, EU:T:2007:333, paragraph 18). Similarly, it has been held that such absence of proof may be penalised by rejecting the opposition only where the applicant has expressly and timeously requested such proof before OHIM in accordance with Article 42(2) of Regulation No 207/2009 (see, to that effect, judgments of 7 September 2006 in Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, ECR, EU:T:2006:247, paragraph 33 and the case-law cited, and 22 April 2008 in Casa Editorial el Tiempo v OHIM — Instituto Nacional de Meteorologia (EL TIEMPO), T‑233/06, EU:T:2008:121, paragraph 26).

20 In the present case, it is apparent from the case-file that the applicant, which did not submit observations before the Opposition Division and the Board of Appeal, did not ask for proof of genuine use of the earlier mark to be provided in the procedure before OHIM. The applicant’s arguments relating to lack of genuine use of the earlier mark must therefore be rejected as inadmissible.

Admissibility of the arguments alleging breach of Article 8(4) of Regulation No 207/2009

21 It is apparent from the application that the applicant asks the Court to find an infringement of Article 8(4) of Regulation No 207/2009.

22 It must be recalled in this respect that, under the first paragraph of Article 21 of the Statute of the Court of Justice and Article 44(1)(c) of the Rules of Procedure of the General Court, which applies to intellectual property matters by virtue of Articles 130(1) and 132(1) of those rules, applications must state a summary of the pleas in law on which they are based.

23 That statement must be apparent from the text of the application itself and be sufficiently clear and precise to enable the defendant to prepare its defence and the Court to rule on the action, if necessary, without any other supporting information (see judgment of 9 July 2010 in Exalation v OHIM (Vektor-Lycopin), T‑85/08, ECR, EU:T:2010:303, paragraph 33 and the case-law cited).

24 In order to ensure legal certainty and the sound administration of justice, if an action is to be admissible, the essential facts and law on which it is based must be apparent from the text of the application itself, at the very least in summary form, provided that the statement is coherent and comprehensible. Similar requirements apply where a claim is put forward in support of a plea in law (see, to that effect, judgment of 19 November 2008 in Rautaruukki v OHIM (RAUTARUUKKI), T‑269/06, EU:T:2008:512, paragraphs 34 and 37).

25 In the present case, it is clear that the applicant confines itself to mentioning Article 8(4) of Regulation No 207/2009 in the form of order sought in its application without submitting any argument at all on an infringement of that provision.

26 Furthermore, even if the applicant had intended to put forward a plea in support of that form of order, it would be ineffective. The Board of Appeal, in paragraphs 32 and 33 of the contested decision, allowed the appeal solely on the basis of Article 8(1)(b) of Regulation No 207/2009, without considering the opposition brought under Article 8(4) of that regulation.

27 Consequently, the argument alleging breach of Article 8(4) of Regulation No 207/2009 must be rejected as inadmissible.

28 The applicant submits that the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009.

30 As stated in Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the two marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Moreover, under Article 8(2)(a)(iii) of Regulation No 207/2009, ‘earlier trade marks’ should be taken to mean trade marks registered under international arrangements which have effect 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.

31 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 economically linked undertakings constitutes a likelihood of confusion. Also according to that case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned, taking into account all factors relevant to the circumstances of the case, in particular the interdependence of the similarity of the signs and the similarity 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).

32 It is in the light of those principles that the Board of Appeal’s assessment of the likelihood of confusion between the signs must be examined.

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

34 In the present case, the findings made by the Board of Appeal as to the relevant territory and public in paragraphs 17 and 18 of the contested decision, which the applicant moreover does not contest, must be endorsed. Thus, from the geographical point of view, the Board of Appeal rightly considered that the relevant territory was Germany. As regards the relevant public, it found that in the present case, having regard to the goods covered by the trade marks, this consisted of the general public, who were reasonably well-informed, observant and circumspect, and of professionals with a higher level of attention. It also rightly found that, because of the technical nature of the goods in classes 1, 2, 7 and 12, the general public’s level of attention with respect to those goods was somewhat higher than normal.

35 The assessments made by the Board of Appeal in paragraphs 24 and 25 of the contested decision with respect to the comparison of the goods, which are not challenged by the applicant, according to which the goods are partly identical and partly similar, must be approved.

36 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the marks, bearing in mind 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 (see 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).

37 The fact that a sign consists exclusively of the earlier trade mark to which another word has been added is an indication that the two trade marks are similar (judgment of 12 November 2008 in ecoblue v OHIM — Banco Bilbao Vizcaya Argentaria (Ecoblue), T‑281/07, EU:T:2008:489, paragraph 28; see also, to that effect, judgment of 4 May 2005 in Reemark v OHIM — Bluenet (Westlife), T‑22/04, ECR, EU:T:2005:160, paragraph 40).

38 In the present case, the signs to be compared are the earlier figurative mark DIN and the contested word sign DINKOOL.

39 First, the Board of Appeal found in paragraph 26 of the contested decision that the signs at issue were visually similar. It noted that the word element ‘din’ appeared in both signs, was the only word element of the earlier sign, and was reproduced identically at the beginning of the contested sign. It stated that, despite the presence of the element ‘kool’ in the contested sign, which produced a difference in the length of the signs and the number of syllables, the signs were similar, because the public was likely to give more importance to the element in common than to the elements that distinguished the signs. Secondly, the Board of Appeal found in paragraph 27 of the contested decision that the signs at issue presented a certain degree of phonetic similarity. Despite differences of intonation and rhythm, it found that the pronunciation of the signs was similar overall, in that the syllable ‘din’ was pronounced in the same way for both signs. Thirdly and finally, the Board of Appeal found in paragraphs 28 and 29 of the contested decision that the signs were conceptually different, while minimising the extent of that difference. Thus, for part of the public, the sign DIN had no meaning in German or English, whereas for another part of the public the element ‘din’ necessarily referred to the activities of the intervener. That difference had to be relativised, however, according to the Board of Appeal, because of the laudatory nature of the term ‘kool’, perceived as a misspelling of the English word ‘cool’. The Board of Appeal observed that German consumers would naturally split the contested sign into two parts, ‘din’ and ‘kool’, because ‘kool’ was a word they knew and, at least for a significant part of the public, ‘din’ would necessarily refer to ‘Deutsches Institut für Normung’.

40 The applicant contests those assessments by the Board of Appeal and submits that the signs at issue are not similar.

41 In the first place, the applicant criticises the contested decision in so far as the signs are visually different, because of the different number of syllables and letters they contain.

42 In this respect, as the Board of Appeal rightly observed, the signs at issue do indeed have dissimilarities, but these are not striking. Thus the earlier mark includes figurative elements, two horizontal bars below and above the word ‘din’, which are not very conspicuous. In addition, the contested sign is distinguished from the earlier sign in that the element ‘kool’ has been added to the word ‘din’.

43 However, having regard to the case-law cited in paragraph 37 above, it must be considered that, in view of the identity of the term ‘din’, the points of dissimilarity mentioned in paragraph 42 above are not sufficient to dispel the relevant consumer’s impression that the signs, assessed globally, have a certain degree of visual similarity.

44 Furthermore, the element ‘din’ is the only word element of the earlier mark and is the first element of the mark applied for. According to the case-law, a consumer normally attaches more importance to the first part of a word (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, paragraph 81, and 7 February 2013 in AMC-Representações Têxteis v OHIM — MIP Metro (METRO KIDS COMPANY), T‑50/12, EU:T:2013:68, paragraph 40).

46 In the second place, the applicant submits that the signs at issue are phonetically dissimilar in that they consist of a different number of syllables and letters.

47 There is a limited degree of phonetic similarity between the signs, as the Board of Appeal rightly found in paragraph 27 of the contested decision. Although the signs at issue contain the same first syllable ‘din’, they present differences in terms of the number of syllables and letters, as the contested sign consists of the two syllables ‘din’ and ‘kool’ and seven letters, whereas the earlier sign consists only of the syllable ‘din’ and three letters. Consequently, the signs display at least a slight difference in rhythm and intonation.

48 In the third place, the applicant submits that the signs at issue present a substantial conceptual dissimilarity. It argues that the relevant public must be divided into two groups in this respect. First, the sign at issue will be perceived by a part of the relevant public who have a knowledge of English as an expression meaning ‘cool din’. Din is an English word for noise or tumult. The word ‘kool’ will be associated with the word ‘cool’ meaning good, perfect or excellent. Secondly, the applicant submits that the sign DIN, as it consists of that sole word element, will be perceived by another part of the relevant public as a reference to the intervener and its activities.

49 It must be observed that, according to the case-law, although the consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into word elements which, for him, have a specific meaning or which resemble words known to him (judgments in RESPICUR, cited in paragraph 33 above, EU:T:2007:46, paragraph 57, and of 13 February 2008 in Sanofi-Aventis v OHIM — GD Searle (ATURION), T‑146/06, EU:T:2008:33, paragraph 58).

50 In the present case, the sign applied for must be analysed as a fantasy word in German, since it has no meaning in that language. The same applies if the consumer understands the term ‘kool’ as a misspelling of the English word ‘cool’ but does not associate it with the activities of the intervener. Moreover, as OHIM rightly points out, it is not likely that a German consumer will know the meaning of the word ‘din’ in English, since, unlike the word ‘cool’, it is not among the elementary English words which the German public is likely to know (see, to that effect, judgment of 28 October 2009 in X-Technology R & D Swiss v OHIM — Ipko-Amcor (First-On-Skin), T‑273/08, EU:T:2009:418, paragraph 37 and the case-law cited).

51 It follows that, for part of the relevant public, the sign DINKOOL is a fantasy word.

52 On the other hand, the term ‘din’ will be associated by part of the relevant public with the activities of the intervener. In that case, if a consumer divides the sign DINKOOL into two syllables, which will be all the more probable if the consumer associates the term ‘din’ with the activities of the intervener, the word element ‘kool’, perceived as a misspelling of the English word ‘cool’, understood by the German public, will be associated with the intervener.

53 The tern ‘din’ is thus either a fantasy word or a reference to the activities of the intervener. In view of the factors set out above, it follows that, contrary to the assessments made by the Board of Appeal, conceptual similarity of the signs at issue exists in the second case but is absent in the first case.

55 The applicant submits, first, that the effect of the Board of Appeal’s reasoning is that any sign reproducing the word element ‘din’, for example the sign consisting of the word ‘dingo’, would have to be regarded as similar to the earlier mark DIN. On this point, it suffices to point out that this argument, which is not capable of demonstrating that the signs at issue are different, is ineffective. Furthermore, the Court finds the comparison suggested by the applicant unconvincing, in that, unlike the word ‘dinkool’ which has no meaning in itself in German, the word ‘dingo’ has a meaning, namely ‘dingo’ (wild dog).

56 Next, with regard to the applicant’s argument that certain marks containing the term ‘din’ have been registered in the past, it should be recalled that, according to settled case-law, the decisions concerning registration of a sign as a Community trade mark which the Boards of Appeal of OHIM are led to take under Regulation No 207/2009 are adopted in the exercise of circumscribed powers and are not a matter of discretion. Accordingly, the lawfulness of those decisions must be assessed solely on the basis of that regulation and not on the basis of a previous decision-making practice (judgments of 26 April 2007 in Alcon v OHIM, C‑412/05 P, ECR, EU:C:2007:252, paragraph 65, and 24 November 2005 in Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, ECR, EU:T:2005:420, paragraph 71). Moreover, it is clear, as OHIM observes, that those marks concern goods and territories which are different from those at issue in the present case. Consequently, that argument cannot in any event demonstrate that the signs at issue are conceptually dissimilar.

57 Finally, the applicant’s argument based on analogy with the acronym ISO, referring to the international standardisation rules, and the energy drinks mark Isostar must be rejected. That argument must first of all be rejected in accordance with the case-law cited in paragraph 56 above. Furthermore and in any event, as the intervener rightly submits, the element ‘iso’ of the mark Isostar clearly refers to the fact that the goods sold under that mark are energy or isotonic drinks.

58 The 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 those 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 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).

59 The Board of Appeal found in paragraph 30 of the contested decision that there was a likelihood of confusion between the signs at issue by reason of the identity and similarity between the goods and the visual, phonetic and conceptual similarities between the signs.

60 That conclusion must be endorsed with respect to the visual and phonetic similarities shown, all the more so as, in accordance with what has been stated in paragraph 53 above, for part of the relevant public the signs are also similar conceptually.

61 In the light of all the above considerations, the action must be dismissed in its entirety, without there being any need to rule on the admissibility of the applicant’s head of claim asking the Court to register the trade mark applied for (see, to that effect, judgments of 22 May 2008 in NewSoft Technology v OHIM — Soft (Presto! Bizcard Reader), T‑205/06, EU:T:2008:163, paragraph 70, and 11 January 2013 in Kokomarina v OHIM — Euro Shoe Group (interdit de me gronder IDMG), T‑568/11, EU:T:2013:5, paragraph 54).

62 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

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

64 Since the intervener has not applied for costs, it must bear its own costs (see, to that effect, judgments of 5 March 1986 in Tezi Textiel v Commission, 59/84, ECR, EU:C:1986:102, paragraph 75, and 13 December 1990 in Nefarma v Commission, T‑113/89, ECR, EU:T:1990:82, paragraph 101).

2. Orders Infocit — Prestação de Serviços, Comércio Geral e Indústria, Lda, to bear its own costs and pay those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM);

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Infocit v OHMI - DIN (DINKOOL) (Judgment) [2015] EUECJ T-621/14 (24 June 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T62114.html Cite as: EU:T:2015:427, [2015] EUECJ T-621/14, ECLI:EU:T:2015:427

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