Aytekin v EUIPO - Dienne Salotti (Dienne) (EU trade mark - Judgment) [2019] EUECJ T-107/18 (27 February 2019)

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(EU trade mark — Opposition proceedings — Application for EU figurative mark Dienne — Earlier EU figurative mark ENNE — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001)

Erkan Aytekin, residing in Ankara (Turkey), represented by V. Martín Santos, lawyer,

European Union Intellectual Property Office (EUIPO), represented by A. Folliard-Monguiral and G. Sakalaite-Orlovskiene, acting as Agents,

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

Dienne Salotti Srl, established in Altamura (Italy), represented by D. Russo, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 15 December 2017 (Case R 1444/2017-2), relating to opposition proceedings between Mr Aytekin and Dienne Salotti,

composed of V. Tomljenović, President, E. Bieliūnas and A. Marcoulli (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 20 February 2018,

having regard to the response of EUIPO lodged at the Court Registry on 8 May 2018,

having regard to the response of the intervener lodged at the Court Registry on 15 May 2018,

having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 On 5 February 2016, the intervener, Dienne Salotti Srl, filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3 The goods in respect of which registration was sought are in Class 20 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Divan beds; Bed chairs; Armchairs; Bunk beds; Divan’.

4 The trade mark application was published in European Union Trade Marks Bulletin No 2016/28 of 11 February 2016.

5 On 17 February 2016, the applicant, Mr Erkan Aytekin, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 (now Article 46 of Regulation 2017/1001) against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

6 The opposition was based on the earlier EU figurative mark registered on 5 November 2012 under number 10863793, reproduced below:

7 The goods and services in respect of which the earlier mark was registered are in Classes 20, 24 and 35 and correspond, as regards the goods in Class 20, to the following description: ‘Furniture of any material; display stands and boards; index cabinets; medicine cabinets; writing and drawing desks; tea trolleys (furniture); deck chairs; counters (tables) not of metal; work benches; vice benches; chests; mailboxes; fixed towel dispensers (not of metal); mattresses; spring mattresses; pillows; air mattresses and pillows; hydrostatic (water) beds not for medical purposes; straw mattresses and sleeping bags for camping; mirrors; beehives; comb foundations for beehives; sections of wood for beehives; playpens for babies; high chairs for babies; bassinettes; infant walkers; vehicle plates not of metal; signs; signboards of wood or plastics; display boards; wooden barrels; casks and kegs; liquid containers; wood boxes; boxes for transportation purposes; transport pallets; packaging containers of plastic, plastic barrels; casks and kegs; reservoirs not of metal nor of masonry; boxes; picture frames; picture frame brackets; mouldings for picture frames; curtain holders not of textile material; curtain hooks; curtain rails; curtain rings; curtain rods; curtain rollers; curtain tie-backs; handles; handle stalks; handle stems; buttons or plugs used in tools and instruments; latches, not of metal; bottle closures, not of metal; bottle caps, not of metal; corks for bottles; cork bands; rivets, not of metal; bolts, not of metal; screws, not of metal; dowels, not of metal; pipe or cable clips, plugs (dowels) not of metal; coat hangers, coat stands and covers for clothing; works of art in this class, of wood, wax, plaster or plastic; sculptures; busts; mannequins; mobiles (decoration); decorative wall plaques (furniture) not of textile; stuffed animals; baskets, bakers’ bread baskets; hamper baskets; reed baskets; fishing baskets; kennels; nesting boxes; cushions; beds for household pets; portable steps (ladders) of wood or plastic (not of metal); boarding stairs, not of metal; mobile boarding stairs, for passengers; reels, not of metal, non-mechanical, for flexible hoses; valves not of metal, taps for casks (not of metal); identity plates, not of metal; nameplates, not of metal; registration plates, not of metal; number plates, not of metal; window fittings, not of metal; door fittings, not of metal; locks, not of metal; racks, shelves for filing cabinets; trolleys (furniture); door handles, not of metal; drawer rails; casters, not of metal; bamboo curtains; indoor window blinds (shades); slatted indoor blinds; bead curtains for decoration’.

8 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).

9 On 29 May 2017, the Opposition Division rejected the opposition on the ground that there was no likelihood of confusion between the marks at issue.

10 On 3 July 2017, the applicant filed an appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.

11 By decision of 15 December 2017 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal, taking the view that there was no likelihood of confusion between the marks at issue.

– annul the contested decision and reject the mark applied for in its entirety;

– order EUIPO and the intervener to pay the costs incurred in the present action and all the costs in the proceedings before EUIPO.

– confirm the contested decision and the decision of the Opposition Division of 29 May 2017;

– order the applicant to pay the costs of the proceedings before EUIPO, the Second Board of Appeal and the General Court.

15 As a preliminary point, given that ‘confirming’ the contested decision and the Opposition Division’s decision is tantamount to dismissing the action, the intervener’s first head of claim must be regarded as seeking, in essence, the dismissal of the action (see, by analogy, judgment of 13 December 2016, Apax Partners v EUIPO — Apax Partners Midmarket (APAX), T‑58/16, not published, EU:T:2016:724, paragraph 15 and the case-law cited).

16 In support of the action, the applicant raises, in essence, a single plea in law, alleging infringement of Article 8(1)(b) of Regulation 2017/1001.

17 Under Article 8(1)(b) of Regulation 2017/1001, upon opposition by the proprietor of an earlier mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier 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 mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark.

18 According to the 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 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 signs and that of the goods or services covered (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).

19 For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see 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).

20 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, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

21 In the present case, in paragraph 11 of the contested decision, the Board of Appeal noted that the goods covered by the marks at issue were aimed at the public at large in the territory of the European Union, which is not disputed by the applicant.

22 In addition, in paragraph 12 of the contested decision, the Board of Appeal stated that that public demonstrated a higher than normal level of attention, since items of furniture are not purchased regularly and the choice leading to the purchase of such goods is preceded by a process of comparison and reflection based on a number of functional and aesthetic considerations, in order to ensure that they are in keeping with other items of furniture already in the consumer’s possession, a process which requires a high level of attention.

23 The applicant argues that it is not true that, for items in Class 20, the level of attention is higher than average. According to the applicant, since those goods are directed at the general public, the level of attention is deemed to be normal or even lower than average. For those goods, the consumer will be likely to pay more attention to a particular design, price and style than to the mark. Moreover, the price of those goods is not high, given that chairs are now sold for EUR 6 and tables for EUR 10.

24 In that regard, it must be stated that the mark applied for does not cover, without distinction, all the goods in Class 20, or, for that matter, chairs or tables, but only specific items of furniture falling within that class, namely, divan beds and bunk beds, bed chairs, armchairs and divans. Although those goods are intended for the general public, they are goods the purchase of which, as the Board of Appeal rightly considered, is not regular or daily but occasional, such goods being, in principle, intended to be long lasting. In addition, the purchase of such goods is subject to a number of inherent functional and aesthetic considerations, including their comfort and their coordination with other items of furniture. The Board of Appeal was therefore right to find that the level of attention of the relevant public was higher than normal. Accordingly, the applicant’s arguments must be rejected as unfounded.

25 In paragraph 13 of the contested decision, the Board of Appeal noted that the goods covered by the mark applied for were included in the goods covered by the earlier mark and were therefore identical, which is not disputed by the applicant.

26 Two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, that is, visually, aurally or conceptually (judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30, and of 10 September 2008, Boston Scientific v OHIM — Terumo (CAPIO), T‑325/06, not published, EU:T:2008:338, paragraph 89).

27 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 signs, account being taken, in particular, of their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

28 In the present case, first of all, in paragraph 19 of the contested decision, the Board of Appeal noted that the earlier mark was a figurative mark composed of the group of letters ‘enne’ represented in a bold, black, upper-case typeface, that it was a short sign that was a palindrome and that the second ‘n’ was represented in reverse.

29 Next, in paragraph 20 of the contested decision, the Board of Appeal noted that the mark applied for was also a figurative mark, made up of the group of letters ‘dienne’ depicted in a standard grey typeface, that the letter ‘d’, the lower left square of which was missing, was capitalised, and that the group of letters ‘ienne’ was in lower case.

30 Last, in paragraphs 21 and 22 of the contested decision, the Board of Appeal considered that, although the letters making up the earlier mark were incorporated in the mark applied for, those letters did not stand out in the mark applied for, were preceded by the group of letters ‘di’ and did not constitute a dominant element. On the basis of those considerations, in paragraph 23 of the contested decision, the Board of Appeal concluded that the earlier mark could not be considered to have an independent distinctive role within the mark applied for, nor could the mark applied for be perceived as consisting exclusively of the earlier mark to which another word had been added.

31 In that regard, first, the applicant claims that the signs at issue contain the same element ‘enne’ with a double ‘n’, preceded, in the mark applied for, by the less distinctive element ‘di’. The preposition ‘di’ can be considered insignificant to a certain extent. Second, according to the applicant, the preposition ‘di’ relates the earlier mark to the mark applied for, since it means ‘of’, ‘from’ or ‘belonging to’. Such a word will be understood by most European Union consumers, since it is very common for trade marks and names based on the Italian language to contain that preposition, especially as many European Union languages have a common Latin root and share words very similar to ‘di’.

32 First of all, it must be pointed out that all the letters making up the mark applied for (‘d’, ‘i’, ‘e’, ‘n’, ‘n’ and ‘e’) are represented one after the other without a space or separating element, including between the group of letters ‘di’ and the group ‘enne’. In addition, those letters are all written in the same typeface, colour, size and horizontal alignment. Only the letter ‘d’, placed at the beginning of the sign, appears in upper case whereas the other letters are in lower case. As a result, the series of six letters is presented as a single word element (‘dienne’).

33 Second, it is clear that no letter or group of letters dominates the image of the mark applied for. In particular, if, admittedly, as the applicant claims, the group of letters ‘enne’ appears in both marks, it does not dominate the image of the mark applied for, since it is represented in the same typeface as the group of letters ‘di’. It therefore does not attract greater attention from the public. The same applies for the group of letters ‘nn’ appearing in both marks.

34 Third, to the extent that the applicant’s arguments are to be understood as contending that the group of letters ‘di’ will be perceived as a mere preposition that is commonly used on the market and in the daily life of consumers and will therefore be weakly distinctive, it should be noted that there is no evidence that that group of letters will be perceived, by the general public situated in the territory of the European Union, as corresponding to the Italian preposition ‘di’ and as meaning ‘of’, ‘from’ or ‘belonging to’.

35 On the one hand, as has been noted in paragraph 32 above, in the mark applied for, the group of letters ‘di’ is not separated from the group of letters ‘enne’. Moreover, since the mark applied for is not of a particular nature as to cause the person reading it to perform such a separation or to wonder about the potential meaning of possible combinations of the constituent letters, it must be held that it is extremely unlikely that the average consumer will proceed to analyse linguistically the various details of the mark applied for, in order to break it down and to give it a meaning in a language of the European Union, such as Italian (see, by analogy, judgment of 26 November 2008, Rajani v OHIM — Artoz-Papier (ATOZ), T‑100/06, not published, EU:T:2008:527, paragraph 61). It is even more unlikely that the consumer will perform such a separation while bearing in mind words that might be similar in another language. On the other hand, the examples of names or marks relied on by the applicant (‘oro di parma’, ‘perle di pomodoro’), even assuming they exist, do not support the applicant’s argument, since, in those expressions or marks, the preposition ‘di’ is immediately identifiable as such and has the specific function of creating the link between the two words it separates. Furthermore, as the Board of Appeal indicated, the group of letters ‘di’ also corresponds, in Italian, to the name of the letter ‘d’.

36 Fourth, there is also no evidence that, in the mark applied for, the group of letters ‘enne’ will be perceived as referring to the earlier mark. Indeed, not only is the group of letters ‘enne’ not represented in the same way in each mark, but the second ‘n’ of the earlier mark is represented in reverse. Moreover, the applicant has not argued that the earlier mark enjoys a particular reputation.

37 It follows that, first, contrary to what the applicant claims, the group of letters ‘di’ is neither distinct nor insignificant compared to the group of letters ‘enne’. Second, the group of letters ‘enne’ does not stand out as being more distinctive or dominant in relation to the group of letters ‘di’. Indeed, as the Board of Appeal noted, the perception of the mark applied for is not dominated by any element.

38 Therefore, the applicant’s arguments that, in the mark applied for, the element ‘di’ is weakly distinctive, if not insignificant, and the ‘di’ preposition relates the mark applied for with the earlier mark, must be dismissed as unfounded.

39 Moreover, even if the applicant’s arguments were to be understood as seeking to challenge the assessment made by the Board of Appeal in paragraph 23 of the contested decision, according to which the earlier mark could not be considered to have an independent distinctive role within the mark applied for and the mark applied for could not be perceived as consisting exclusively of the earlier mark to which another word had been added, such arguments are also unfounded.

40 In that regard, it must be borne in mind that it is apparent from the case-law cited by the Board of Appeal in paragraph 23 of the contested decision that it is possible that an earlier mark used by a third party in a composite sign that includes the name of the company of the third party retains an independent distinctive role in the composite sign (see judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 24 and the case-law cited).

41 In addition, it should be noted that the purpose of examining whether any of the components of a composite sign has an independent distinctive role is to determine which of those components will be perceived by the target public (judgment of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 33).

42 In the present case, however, although the sequence of letters ‘e’, ‘n’, ‘n’ and ‘e’ forming the word element ‘enne’ represented in the earlier mark is included in the sequence of letters forming the word element ‘oral’ represented in the mark applied for, it must be held that, in the mark applied for, those letters are represented in such a way as to form a unitary element with the letters ‘d’ and ‘i’ preceding them. Accordingly, faced with the mark applied for, the relevant public will not perceive the group of letters ‘enne’ independently but the mark applied for as a whole, as the Board of Appeal rightly considered in paragraph 23 of the contested decision.

43 Regarding, in the first place, the visual comparison, in paragraph 25 of the contested decision, the Board of Appeal considered the marks at issue to be similar to a very low degree. In doing so, in paragraphs 24 and 25 of the contested decision, it relied, first, on the fact that the beginnings of the signs were different, that the length of the signs was also different, that the earlier mark was short and that its specific visual characteristics, inherent in particular to the fact that it constitutes a palindrome and that its second ‘n’ is represented as the mirror image of its first ‘n’, would immediately attract the attention of consumers and, second, on the consideration that the presence, in one of the marks, of figurative elements set out in a specific and original way can have the effect that the overall visual impression conveyed by each mark is different.

44 The applicant disputes that assessment. He argues that, although the two brands are figurative, they are made up of undistinctive fonts and have the same colour palette. The figurative elements are irrelevant in the comparison, as is apparent from comparing the marks ENNE and DIENNE in a uniform font; without the figurative elements, the marks remain exactly the same. The comparison of the signs at issue should thus be made solely by taking into account the number and sequence of the letters. The applicant adds that both trade marks have the same chain of letters ‘e’, ‘n’, ‘n’ and ‘e’ in the same position, that the mark applied for contains the earlier mark in its entirety and that the two marks share a double ‘n’. According to the applicant, the signs are thus similar to at least an average or high degree.

45 As a preliminary point, it should be noted that, contrary to what the applicant suggests, the visual comparison of the signs at issue cannot be made by reproducing their word elements in a uniform font as if they were the word marks ENNE and DIENNE. First, as is apparent from paragraphs 2 and 6 above, the earlier mark and the mark applied for are both figurative marks. Second, the case-law cited by the applicant according to which, in the case of a mark consisting of both word and figurative elements, the word elements must generally be regarded as more distinctive than the figurative elements (see, to that effect, judgment of 6 December 2013, Premiere Polish v OHIM — Donau Kanol (ECOFORCE), T‑361/12, not published, EU:T:2013:630, paragraph 32) cannot be interpreted as meaning that, in the comparison of two figurative marks each made up of a stylised word element, such as in the present case, the stylisation of the word elements should not be taken into account, since that would amount to considering the figurative marks at issue as being word marks. Consequently, the comparison of the two marks at issue cannot overlook the stylisation of their respective word elements.

46 First, as regards the number and sequence of letters, which the applicant argues should be taken into account, first of all, it must be pointed out that each of the two marks is made up of a single word element and that those word elements do not have the same length. In particular, the earlier mark is made up of a four-letter word element (‘enne’), whereas the mark applied for consists of a word element of six letters (‘dienne’).

47 Next, not only is the number of letters different, but the beginning of the two word elements differs also. Specifically, the earlier mark begins with the letter ‘e’ followed by the letter ‘n’, whereas the mark applied for begins with the letter ‘d’ followed by the letter ‘i’. According to the case-law, consumers will generally pay greater attention to the beginning of a mark than to its end, the initial part of a mark normally having a greater impact, both visually and phonetically, than the final part (see judgment of 19 June 2018, Damm v EUIPO — Schlossbrauerei Au, Willibald Beck Freiherr von Peccoz (EISKELLER), T‑859/16, not published, EU:T:2018:352, paragraph 68 and the case-law cited).

48 It is true that the other four letters which appear in the mark applied for are the same letters which make up, in the same order, the whole of the earlier mark. However, those letters, as has been noted in paragraph 37 above, do not stand out in the mark applied for and do not dominate the perception the relevant public has. That is not called into question by the case-law, relied on by the applicant, according to which, in respect of word marks which are relatively short, the central elements are as important as the elements at the beginning and end of the sign (judgment of 20 April 2005, Krüger v OHIM — Calpis (CALPICO), T‑273/02, EU:T:2005:134, paragraph 39). Indeed, it should be noted that, in paragraph 39 of the judgment of 20 April 2005, CALPICO (T‑273/02, EU:T:2005:134), the Court essentially held that the signs at issue, CALPICO and CALYPSO, were not visually similar, even though their first three letters were the same, on the basis of their different central letters. It thus follows from that judgment that it cannot be excluded that signs may be considered to be of low similarity, or even different, from a visual point of view, even though they contain a sequence of identical letters (see, to that effect, judgment of 11 December 2013, Eckes-Granini v OHIM — Panini (PANINI), T‑487/12, not published, EU:T:2013:637, paragraph 42).

49 Consequently, as the Board of Appeal noted, the presence, in the mark applied for, of the group of letters ‘di’ is of particular importance, since that initial element of differentiation is likely to attract the attention of the public and thus contribute to mitigating, in the context of an overall impression, the effect conveyed by the element of similarity ‘enne’ (see, by analogy, judgment of 13 February 2008, Sanofi-Aventis v OHIM — GD Searle (ATURION), T‑146/06, not published, EU:T:2008:33, paragraphs 49 and 50).

50 In addition, it should be noted that, while the word element making up the earlier mark has the appearance of being a palindrome, in the sense that the order of its letters is the same whether from left to right or from right to left and it can thus be read the same in either direction, such a property is missing in the word element making up the mark applied for.

51 Last, the applicant’s argument that figurative marks composed of letters that are not highly stylised are similar when they share a significant number of letters in the same position must be rejected. It is sufficient to recall that, in the present case, the Board of Appeal did not consider the signs at issue not to be similar from a visual point of view, but considered them to be similar to a very low degree.

52 Second, as regards the stylisation of the letters, first, it should be pointed out that the typefaces used in the marks at issue are different and are in different colours. The earlier mark is depicted in bold characters, black in colour and in upper case. By contrast, the mark applied for is depicted in standard characters, grey in colour and in lower case, except for the first letter, which is in upper case.

53 Moreover, it must be stated that the earlier mark appears stylised in such a way that each upper-case letter gives the impression of being slightly broader than high, which makes the sign appear more squashed vertically and more elongated horizontally than a hypothetical ENNE mark in a uniform typeface, such as is claimed by the applicant. That quality is missing in the mark applied for, the letters of which, though stylised, are in fact represented in a rather standard typeface.

54 Second, each of the two marks possesses particular figurative characteristics. In the mark applied for, the first letter, the capital ‘D’, is represented in such a way that its right angle at the bottom left is invisible. In the earlier mark, the third letter, the capital ‘N’, is represented in such a way that it forms the mirror image of the second letter, the capital ‘N’, which moreover strengthens the ‘palindrome’ aspect of the word.

55 Thus, contrary to what the applicant suggests, the group of letters ‘enne’, including the double ‘n’, is not represented in the same way in both marks, in view not only of the different typefaces used but, more particularly, of the fact that, as is noted in paragraph 54 above, the second ‘n’ is represented in reverse in the earlier mark, like a mirror image of the first ‘n’, whereas, in the mark applied for, that letter is represented on the right side.

56 Such characteristics contribute to distinguishing the two marks visually, especially given that the case-law states that even insignificant differences between signs are capable of creating a different overall impression where those signs are made up of short words (see, to that effect, judgment of 11 December 2014, Oracle America v OHIM — Aava Mobile (AAVA CORE), T‑618/13, not published, EU:T:2014:1053, paragraph 44 and the case-law cited).

57 Consequently, in view of the fact that the marks at issue exhibit visual differences inherent to their length, their first letter, their properties, their typefaces and their particular figurative characteristics, the Board of Appeal did not err in finding those marks to be similar to a very low degree on the visual level.

58 As regards, in the second place, the phonetic comparison, the Board of Appeal considered, in paragraph 26 of the contested decision, that the pronunciation of the signs coincided in the sound of the sequence of letters ‘enne’ and that the signs were therefore phonetically similar. It added that, due to the initial group of letters ‘di’ that appears in the mark applied for, which has no equivalent in the earlier mark, the pronunciation of the marks at issue differs in length and intonation.

59 The applicant claims that the contested decision suggests that there is no phonetic similarity between the signs and argues that that is untrue. In his view, it is an undisputed fact that the marks share, in the same order, four letters which form the same two syllables and which have the same intonation. Thus, although the marks begin differently, it cannot be denied that there are striking phonetic similarities, such as the intonation of the double ‘n’. According to the applicant, it should therefore be concluded that there is a high degree of phonetic similarity.

60 The applicant’s arguments, however, are based on a misinterpretation of the contested decision and have no factual basis. Indeed, the Board of Appeal expressly stated that the signs at issue were phonetically similar, since their pronunciation coincided in the sound of the sequence of letters ‘enne’. Thus, contrary to what the applicant suggests, the Board of Appeal neither indicated that there were no phonetic similarities between the marks nor neglected to take into account those phonetic similarities. The fact that the Board of Appeal also noted that the pronunciation of the marks differed due to the initial group of letters ‘di’ appearing in the mark applied for in no way affects its previous finding as to the existence of phonetic similarity.

61 In that last regard, the applicant’s argument that the degree of that phonetic similarity is high cannot be accepted. On the one hand, that argument is not supported by any concrete evidence, the applicant merely stating in general terms that such a conclusion is more in line with the applicable rules and case-law. On the other hand, it should be recalled that the initial group of letters ‘di’ has no equivalent in the earlier mark and that, in accordance with the case-law cited in paragraph 47 above, the consumer will tend to attach more importance to the initial element of the mark applied for, including on the phonetic level. Thus, although the marks at issue have a certain phonetic similarity, it cannot be considered to be high.

62 Consequently, the Board of Appeal did not err in finding the signs at issue to be phonetically similar.

63 As regards, in the third place, the conceptual comparison, the Board of Appeal considered, in paragraphs 27 and 28 of the contested decision, on the one hand, that the signs were meaningless for the relevant non-Italian-speaking public and that, therefore, for that part of the public, since it was impossible to make a conceptual comparison, the conceptual aspect did not influence the assessment of the similarity of the signs. The Board of Appeal considered, on the other hand, that, although, for a small part of the Italian-speaking public, a semantic link between the two marks might exist through the concept of the name of the letter ‘n’, on the whole, the mark applied for had no clear and straightforward meaning for the relevant public and the average consumer did not meticulously compare the signs next to one another.

64 The applicant claims that the two marks refer to the concept of the letter ‘n’ in Italian and thus mean ‘enne’ and ‘referring to enne’. Consequently, the marks at issue are almost identical from a conceptual point of view. In the alternative, the applicant argues that the marks at issue have no meaning and that the conceptual aspect therefore does not influence the assessment of the similarity of the signs.

65 It is appropriate to begin, first, by noting that, as the Board of Appeal states in paragraph 28 of the contested decision, for the non-Italian-speaking public, the marks at issue are meaningless. The applicant also acknowledges this, indicating, primarily, that both marks refer to a concept in Italian and, in the alternative, that they have no meaning. Therefore, even if those marks were to have, in Italian, the meaning alleged by the applicant, it would only be the relevant Italian-speaking public that would perceive that concept. Consequently, the Board of Appeal was right to consider that the conceptual aspect did not influence the assessment of the similarity of the marks at issue in respect of the non-Italian-speaking public.

66 Second, as far as the relevant Italian-speaking public is concerned, if it cannot, in principle, be excluded that a part of that public, in addition to understanding the earlier mark as referring to the name of the letter ‘n’, can break down the mark applied for and understand it as referring also to the name of the letter ‘n’, such an association is not immediate. As has been observed in paragraph 35 above, it is extremely unlikely that the average consumer will proceed to analyse linguistically the various details of the mark applied for, in order to break it down. Thus, the possibility that the Italian-speaking public will make such an association remains hypothetical and at most concerns, as the Board of Appeal noted, only a small part of that public. Nor can it be ruled out that the relevant Italian-speaking public will understand the mark applied for as being a sequence of letters with no meaning, especially since the letters in question are not separated and appear as a single word, which does not actually have any meaning in Italian. Thus, in paragraph 27 of the contested decision, the Board of Appeal was right to consider that, although, for a small part of the relevant Italian-speaking public, a certain ‘semantic link’ might exist between the signs at issue, the mark applied for had no meaning, on the whole, for that public.

67 Consequently, the Board of Appeal did not err in the conceptual comparison of the marks at issue.

68 In paragraphs 32 and 33 of the contested decision, the Board of Appeal noted that the applicant had not claimed that the earlier mark was particularly distinctive by virtue of its intensive use or reputation and accordingly found that the assessment of the distinctive character of that mark would rest on its distinctiveness per se. In that regard, it considered that that distinct character was normal for the relevant public as a whole. That assessment is not disputed by the applicant, who considers the earlier mark to have normal inherent distinctiveness.

69 The Board of Appeal, after having recalled, in paragraphs 34 to 40 of the contested decision, the reasoning of the Court in the judgment of 25 June 2013, Aldi v OHIM — Dialcos (dialdi) (T‑505/11, not published, EU:T:2013:332), as well as, in paragraph 41 of the contested decision, the reasoning adopted by the Fourth Board of Appeal in the decision of 13 June 2014, DIALDI (Fig.) v ALDI (R 414/2014-4), took account of the circumstances of the present case.

70 In that regard, in paragraphs 43 to 49 of the contested decision, the Board of Appeal noted that the earlier mark possessed uncommon graphic features which would be clearly perceived and remembered (paragraph 43 of the contested decision); that, for the goods concerned, the relevant public demonstrated an enhanced level of attention (paragraph 45 of the contested decision); that it was appropriate to take into account the way in which the goods were marketed and that, in the case of furniture, while oral communication was not excluded, it was generally chosen visually, which meant that the visual aspect played a greater role in the assessment of the likelihood of confusion (paragraph 46 of the contested decision); that the mark applied for as a whole conveyed no immediate and clear meaning and that, even if the concept of the letter ‘n’ was perceived in both signs by a part of the Italian-speaking public, it did not lead the relevant public to associate the signs as originating from linked undertakings, but to associate them to the plain concept of the letter ‘n’ (paragraph 47 of the contested decision); that, although the goods were identical, the level of attention was enhanced and the visual and phonetic differences were clear and sufficient to outweigh the possible semantic link for that part of the public, since the signs conveyed different overall impressions (paragraph 48 of the contested decision); and, last, that the element the signs had in common (‘enne’) was not recognisable in the mark applied for for the rest of the relevant public (paragraph 49 of the contested decision).

71 In the light of all those circumstances, in paragraphs 50 and 51 of the contested decision, the Board of Appeal concluded that the mark applied for, as a whole, created a different impression which outweighed any similarities with the earlier mark and that, therefore, there was no reason to assume that the relevant public would think that the identical goods came from the same undertaking or from economically linked undertakings. Thus, according to the Board of Appeal, there was no likelihood of confusion between the signs at issue.

72 The applicant disputes that conclusion and considers that there is a likelihood of confusion between the marks at issue. He argues that the slight differences between the earlier mark and the mark applied for are not sufficient to counteract their similarities, in addition to the fact that those marks cover identical goods. In particular, first of all, the applicant argues that the marks at issue are partially identical because they share the same element ‘enne’. The contested decision gave an exaggerated relevance to the figurative elements of marks, when the two marks are likely to be associated with each other due to that shared word element. Next, the applicant states that the goods covered by the marks at issue are absolutely identical, which means that the likelihood of confusion is enhanced. Indeed, in such circumstances, it is apparent from paragraph 69 of the judgment of 29 January 2013, Fon Wireless v OHIM — nfon (nfon) (T‑283/11, not published, EU:T:2013:41), that, if there is to be no likelihood of confusion, the degree of difference between the marks at issue must be high. Last, the applicant argues that it is not true that the attention of consumers for goods in class 20 is higher than average.

73 As a preliminary point, it should be noted that 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 those 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).

74 Moreover, it must be stated that, in the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the opposing signs do not always have the same weight and it is then appropriate to examine the objective conditions under which the marks may be present on the market (judgment of 23 November 2010, Codorniu Napa v OHIM — Bodegas Ontañon (ARTESA NAPA VALLEY), T‑35/08, EU:T:2010:476, paragraph 60). According to the case-law, the extent of the similarity or difference between the signs at issue may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by those signs are marketed (judgment of 18 May 2018, Italytrade v EUIPO — Tpresso (teaespresso), T‑68/17, not published, EU:T:2018:283, paragraph 68). In particular, if the goods covered by the marks in question are usually sold in self-service stores where the consumers choose the goods themselves and must therefore rely on the image of the trade mark applied to the product, the visual similarity between the signs will, as a general rule, be more important. If, on the other hand, the goods covered are primarily sold orally, greater weight will usually be attributed to any phonetic similarity between the signs (judgment of 6 October 2004, New Look v OHIM — Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, EU:T:2004:293, paragraph 49). Likewise, the degree of phonetic similarity between the two marks is of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually perceives visually the mark designating those goods (judgment of 23 January 2008, Demp v OHIM — Bau How (BAU HOW), T‑106/06, not published, EU:T:2008:14, paragraph 45).

75 In the case at hand, the Board of Appeal noted, rightly, that the choice of the goods covered by the marks at issue, which are items of furniture, was generally made visually and that, therefore, visual perception of the marks in question would generally take place prior to purchase. As an example, even if shops which sell furniture employ staff to help customers with their choice and, therefore, oral communication on the goods and on the marks of those goods is not excluded, visual perception of the marks generally takes place prior to purchase, since the goods and the documentation describing the goods and, thus, the marks are displayed in those shops. Furthermore, that oral communication will take place, where appropriate, with qualified sales personnel who are in a position to inform customers about the various marks.

76 It follows that, in the case at hand, in the global assessment of the likelihood of confusion, particular importance must be attached to the visual perception of the marks at issue, whereas their phonetic similarity is of less importance in view of the visual differences between them.

77 In those circumstances, the Board of Appeal was right to consider that, although the marks at issue cover identical goods, they create a different impression as a whole. Indeed, given their visual differences, inherent to their length, their first letter, their properties, their typefaces and their particular figurative characteristics, they are similar only to a very low degree on the visual level, which, in view of how the goods concerned are purchased, is of particular importance in the global assessment of the likelihood of confusion between the marks at issue. On the other hand, their phonetic similarities are of less importance, especially since, phonetically, those marks are distinguished by the initial group of letters ‘di’, which appears only at the beginning of the mark applied for. Nor can that different overall impression of the marks at issue be called into question by the possible conceptual similarity between the goods at issue that might be perceived only by a small part of the relevant Italian-speaking audience. It is, on the contrary, supported by the fact that the earlier mark has only a normal intrinsic distinctive character and by the fact that the relevant public demonstrates higher than average attention as regards the goods covered by the marks at issue, taking into account in particular the functional and aesthetic criteria coming into play during their purchase. Accordingly, the Board of Appeal did not err in concluding, in the context of a global assessment of all those factors, as made in paragraphs 43 to 51 of the contested decision, that there was no likelihood of confusion between the marks at issue.

78 The arguments of the applicant seeking to call that conclusion into question are unfounded.

79 First, the arguments of the applicant contesting the level of attention of the relevant public adopted by the Board of Appeal have already been rejected as unfounded in paragraph 24 above. In addition, the circumstances of the present case are different from those in the case which gave rise to the judgment of 26 September 2017, Banca Monte dei Paschi di Siena and Banca Widiba v EUIPO — ING-DIBa (WIDIBA) (T‑83/16, not published, EU:T:2017:662), relied on by the applicant, since, in that case, two word marks were at issue and the Board of Appeal considered them to be similar in all respects, whereas, in the present case, two figurative marks are at issue and they are inter alia of very low visual similarity.

80 Second, as regards the arguments of the applicant concerning the comparison of the marks at issue, it should be recalled that, as has been noted in paragraph 57 above, the Board of Appeal was right to find that those marks were visually similar to a very low degree. Thus, the arguments seeking to demonstrate that, on the visual level, the marks are partially identical must be rejected as unfounded. The same applies, for the reasons set out in paragraphs 45 and 48 above, to the arguments of the applicant suggesting that the Board of Appeal gave an exaggerated relevance to the figurative elements or to the beginning of the mark applied for. Moreover, the circumstances of the present case are different from those examined in the case which gave rise to the judgment of 25 June 2013, dialdi (T‑505/11, not published, EU:T:2013:332), cited by the applicant, since, in that case, a word mark and a figurative mark were at issue, whereas, in the present case, two figurative marks are at issue.

81 Moreover, it should be recalled that, as is apparent from paragraphs 62 and 67 above, the Board of Appeal did not commit any error in the comparison of the signs at issue on the phonetic and conceptual levels, either.

82 Third, as regards the argument of the applicant derived from paragraph 69 of the judgment of 29 January 2013, nfon (T‑283/11, not published, EU:T:2013:41), according to which, as the goods are identical, if there is to be no likelihood of confusion, the degree of difference between the marks at issue must be high, it should be borne in mind that the Court of Justice has held that, in stating that assertion, the General Court did not formulate a general interdependency principle enabling it, unless there is a significant difference between the marks, automatically to conclude and without it being necessary to carry out a global assessment taking into account all the factors relevant to the existence of a likelihood of confusion (order of 16 January 2014, nfon v Fon Wireless and OHIM, C‑193/13 P, not published, EU:C:2014:35, paragraph 41). However, as has been noted in paragraph 77 above, in the case at hand, the Board of Appeal did carry out a global assessment taking into account all the relevant factors.

83 It follows from all the foregoing that the arguments made in support of the applicant’s single plea are unfounded and must be rejected.

84 Accordingly, the single plea put forward by the applicant in support of its form of order must be rejected, and the action must be dismissed in its entirety, without it being necessary to rule on the admissibility or on the merits of the second part of the applicant’s second head of claim requesting the Court to reject the mark applied for in its entirety, since that head of claim depends on the success of the action for annulment being upheld, so that it is made only in the event that the first head of claim succeeds (see, by analogy, judgment of 28 June 2005, Canali Ireland v OHIM — Canal Jean (CANAL JEAN CO. NEW YORK), T‑301/03, EU:T:2005:254, paragraphs 67 and 68).

85 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, he must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

86 Moreover, the intervener has requested that the applicant be ordered to pay the costs incurred by the intervener in the proceedings before EUIPO and the Second Board of Appeal.

87 Under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, that does not apply to costs incurred for the purposes of the proceedings before the Opposition Division (judgment of 26 October 2017, Sulayr Global Service v EUIPO — Sulayr Calidad (sulayr GLOBAL SERVICE), T‑685/15, not published, EU:T:2017:761, paragraph 53).

88 In any event, it must be pointed out that, in the contested decision, the applicant was ordered by the Board of Appeal to pay the intervener’s costs in respect of the costs the intervener had incurred in the opposition and appeal proceedings. Accordingly, since the present judgment is dismissing the action brought against the contested decision, it is the operative part in the contested decision which continues to determine the costs in question (see, by analogy, judgments of 10 October 2017, Cofra v EUIPO — Armand Thiery (1841), T‑233/15, not published, EU:T:2017:714, paragraph 127, and of 19 October 2017, Aldi v EUIPO — Sky (SKYLITe), T‑736/15, not published, EU:T:2017:729, paragraph 131).

2. Orders Mr Erkan Aytekin to bear his own costs and to pay those incurred, in connection with the present proceedings, by the European Union Intellectual Property Office (EUIPO) and by Dienne Salotti Srl.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Aytekin v EUIPO - Dienne Salotti (Dienne) (EU trade mark - Judgment) [2019] EUECJ T-107/18 (27 February 2019) URL: http://www.bailii.org/eu/cases/EUECJ/2019/T10718.html Cite as: ECLI:EU:T:2019:114, EU:T:2019:114, [2019] EUECJ T-107/18

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