Shah v Three -N- Products Private Ltd [2013] EUECJ C-14/12 (30 May 2013)

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(Appeal - Community trade mark - Regulation (EC) No 40/94 - Article 8(1)(b) - Relative ground for refusal - Likelihood of confusion - Similarity of the signs - Application for registration of the Community word mark AYUURI NATURAL - Opposition by the proprietor of the earlier Community word and figurative marks AYUR - Appeal manifestly inadmissible and manifestly unfounded)

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 9 January 2012,

Three-N-Products Private Ltd, established in New Delhi (India), represented by C. Jäger, Rechtsanwältin,

Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis and D. Walicka, acting as Agents,

composed of G. Arestis (Rapporteur), President of the Chamber, J.-C. Bonichot, and J.L. da Cruz Vilaça, Judges,

having decided, after hearing the Advocate General, to give a decision by reasoned order, in accordance with Article 181 of the Rules of Procedure of the Court of Justice,

1 By their appeal, Mr S. Shah and Mr A. Shah seek to have set aside the judgment of the General Court of the European Union of 10 November 2011 in Case T-313/10 Three-N-Products Private v OHIM - Shah (AYUURI NATURAL) (‘the judgment under appeal’), by which the General Court annulled the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 1 June 2010 (Case R 1005/2009-4) relating to opposition proceedings between, on the one hand, Three-N-Products Private Ltd and, on the other, Mr S. Shah and Mr A. Shah (‘the contested decision’).

2 Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1) was repealed and replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009. Nevertheless, given the date on which the application for registration of the mark at issue was filed, the present case remains governed by Regulation No 40/94, at least as regards provisions which are not strictly procedural.

3 Article 8(1) of Regulation No 40/94, the wording of which was reproduced without amendment by Regulation No 207/2009, provided:

‘1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

(b) 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 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.’

4 The facts underlying the dispute were set out by the General Court in paragraphs 1 to 12 of the judgment under appeal as follows:

‘1 On 2 April 2007, the interveners [at first instance], Sheilesh Shah and Akhil Shah, filed an application for registration of a Community trade mark at [OHIM] under … Regulation … No 40/94 ...

3 The goods in respect of which registration was sought fall within Classes 3 and 5 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 [“the Nice Agreement”], and correspond, for each of those classes, to the following description:

- Class 3: “soaps; perfumery, essential oils, cosmetics, hair care products; dentifrices; beauty products”;

- Class 5: “Ayurvedic preparations; homeopathic preparations; herbal health preparations; healthfood supplements; healthcare products”.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 2008/011 of 10 March 2008.

5 On 10 April 2008 the applicant [at first instance], Three-N-Products Private Ltd [“Three-N-Products Private”], filed a notice of opposition under Article 42 of Regulation No 40/94 … against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

7 The earlier mark registered under No 5429469 designates goods falling within Classes 3 and 5 of the Nice Agreement and corresponding, for each of those classes, to the following description:

- Class 3: “cosmetics, non medicated herbal skin care preparations, non medicated herbal hair care preparations, non medicated body care lotions; laundry bleach”;

- Class 5: “Herbal preparations for skin treatment, weight control, weight loss and treatment of diabetes; vitamin and mineral preparations and substances; health care products; vitamin preparations, mineral preparations for skin treatment, weight loss and treatment of diabetes”.

8 The earlier mark registered under No 2996098 designates products falling within Classes 3 and 5 within the meaning of the Nice Agreement and corresponding, for each of those classes, to the following description:

- Class 3: “cosmetics, non-medicated toiletries, bleaching preparations, scouring and cleansing preparations; cotton wool for cosmetic purposes”;

- Class 5: “herbal preparations; dietetic preparations and substances; vitamin and mineral preparations and substances; health care products; vitamin preparations, mineral preparations”.

9 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 …

11 On 27 August 2009, [Mr S. Shah and Mr A. Shah] filed a notice of appeal at OHIM against the decision of the Opposition Division, pursuant to Articles 58 to 64 of Regulation No 207/2009.

12 By [the contested decision] the Fourth Board of Appeal of OHIM annulled the decision of the Opposition Division. Essentially, it considered that, although the goods in question were identical or similar, there was no likelihood of confusion given the weak distinctive character of the earlier marks and the low overall similarity between the signs at issue.’

5 By application lodged at the Registry of the General Court on 26 July 2010, Three-N-Products Private brought an action seeking annulment of the contested decision.

6 In support of its action, Three-N-Products Private relied, in essence, on two pleas, the first alleging a breach of Article 7(1)(b) and (c) of Regulation No 207/2009 and Article 8(1)(b) of that regulation, and the second alleging a misuse of power within the meaning of Article 65(2) of the same regulation.

7 By the judgment under appeal, the General Court upheld the first plea and annulled the contested decision without examining the second plea.

8 In particular, as regards the visual, phonetic and conceptual comparison of the signs at issue, the General Court, in paragraphs 36 to 54 of the judgment under appeal, ruled as follows:

‘36 It should be observed that the marks at issue are visually different, owing to the presence of “natural”, two letters “u” and a letter “i” in the AYUURI NATURAL mark applied for.

37 As the Board of Appeal noted, and the parties do not contest, “ayuuri” is the dominant component of the mark applied for.

38 It should be noted that all the letters of the term “ayur” are reproduced, in the same order, in “ayuuri”. Admittedly, the letters “u” and “i” added in the middle and at the end of the word are different, but they are not such as to attract the attention of the consumer, since he normally attaches more importance to the first part of words …

39 Furthermore, as the Board of Appeal stated, the term “natural” is a term frequently used in the field of beauty care and health treatments. Therefore, it will have only secondary importance in the overall impression left by the mark applied for.

40 It follows from the foregoing that, taking each as a whole, the two word marks at issue bear a high degree of visual similarity.

41 Regarding the comparison of the word mark applied for and the earlier figurative mark, it should be observed that graphic differences add to the differences between the verbal elements referred to at paragraphs 38 and 39 above: in the earlier figurative mark, a ring circles the word component and there are two ears of cereal to the right of that component.

42 The graphic components are of secondary importance, however, in that they do not constitute a particularly original or fantastical representation likely to draw the consumer’s attention. In addition, neither their size nor their colour is so distinctive as to dominate the word component of the mark …

43 It follows from the foregoing that, taking each as a whole, the mark applied for and the earlier figurative mark exhibit an average degree of visual similarity.

44 At the phonetic level, as was observed by the Board of Appeal, the earlier marks are pronounced “ayur”, with two syllables, whereas the mark applied for is composed of two words comprising, in all, six syllables.

45 However, it must be recalled that all the letters of the earlier marks are included within the dominant component of the mark applied for. In addition, even if, as the Board of Appeal states, the consumer will try to pronounce the second syllable “yuu” for longer, it is not certain that this difference will be perceptible to the ear, particularly if the word is pronounced quickly. Moreover, though the letter “i” at the end of the word does indeed reinforce the phonetic differences in those languages in which the accent is on the last syllable, it is however at the end of the dominant element, to which consumers generally pay less attention, as the Board of Appeal rightly observed.

46 It follows from all the foregoing that the marks at issue, each taken as a whole, have phonetic differences; these are not, however, sufficient to counteract the resemblances between the dominant component of the mark applied for and the earlier marks. Accordingly, it is necessary to conclude that the signs at issue present an average degree of phonetic similarity.

47 At the conceptual level, it must be held that, contrary to the view of the Board of Appeal, the relevant public will not readily link the component “ayur” and the word “Ayurveda”, which refers to a form of traditional Hindu medicine.

48 In that regard, as the Board of Appeal noted in the contested decision, the word “Ayurveda” exists in several languages of the European Union. Furthermore, the terms “Ayurveda”, “ayurvedic” or “ayur” are mentioned on pages of internet sites that were placed on the case file by the interveners [at first instance].

49 However, that does not provide a sufficient basis on which to conclude that consumers in general are familiar with the concept of “Ayurveda” in the sense of traditional Indian health and medicinal teachings. Although there exists, among the general consumer public of the European Union, a more specialised public with knowledge of alternative medicine, esotericism, Hinduism, oriental culture and yoga …, there is no basis for the conclusion that that public makes up a large part of the relevant public, contrary to the assertions of the Board of Appeal. …

50 Accordingly, only a part of the relevant public, made up of professionals in the field of beauty products and health treatments and also the public specifically interested in Indian culture or questions relating to alternative forms of medicine, will readily associate “Ayurveda” and “ayur”. Owing to its knowledge, this specialised public will also recognise that the component “ayuuri” alludes to “Ayurveda”.

51 On the other hand, for consumers who are unfamiliar with Indian culture or alternative medicine, it must be concluded that the terms “ayur” and “ayuuri” are devoid of meaning.

53 It follows that, for a part of the relevant public, there is a certain conceptual similarity between the signs at issue, whereas, for final consumers who have no particular interest in Indian culture or questions of alternative medicine, no conceptual comparison is possible.

54 In the light of all the foregoing, the Board of Appeal was wrong to conclude that the signs at issue exhibited a low degree of overall similarity. Given the average or high degree of visual similarity and the average degree of phonetic similarity, as well as the conceptual similarity for a part of the relevant public, it must on the contrary be concluded that the signs at issue bear at least an average degree of overall similarity.’

9 As regards the assessment of the likelihood of confusion, the General Court, in paragraphs 60 to 66 of the judgment under appeal, ruled as follows:

‘60 Regarding the distinctive character of the earlier marks, it follows from paragraphs 47 to 51 above that only a part of the relevant public will readily associate the terms “Ayurveda” and “ayur” for the relevant products.

61 Accordingly, the earlier marks can be considered weakly distinctive only for a part of the relevant public.

62 In the present case, as has been recalled above, the goods in question are identical or similar and the marks at issue exhibit at least an average overall degree of similarity.

63 It follows that, since the earlier marks are distinctive for a part of the relevant public and given the similarities between the goods and signs at issue, it must be concluded that there is a likelihood of confusion between the conflicting marks.

64 In any event, the finding of weak distinctive character for the earlier mark does not prevent a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in such assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see Case T-134/06 Xentral v OHIM - Pages jaunes (PAGESJAUNES.COM) [2007] ECR II-5213, paragraph 70 and the case-law cited).

65 Accordingly, even if the distinctive character of the earlier marks were considered weak for all of the relevant public, the similarities between the goods and signs set out at paragraph 62 above would justify the conclusion that there exists a likelihood of confusion.

66 It follows from all the foregoing that the Board of Appeal was wrong to conclude that there was no likelihood of confusion. …’

- allow the application for registration of the Community trade mark to proceed, and

11 Three-N-Products Private contends that the Court should dismiss the appeal and order the appellants to pay the costs.

12 OHIM contends that the Court should set aside the judgment under appeal and order Three-N-Products Private to pay the costs.

13 Under Article 181 of its Rules of Procedure, where an appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court may at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, dismiss the appeal in whole or in part by reasoned order without opening the oral procedure.

14 In support of their appeal, the appellants put forward one single ground of appeal alleging breach of Article 8(1)(b) of Regulation No 40/94. That ground of appeal consists of two parts.

The first part, relating to an error on the part of the General Court in assessing the comparison of the signs

15 By the first part of their single ground of appeal, the appellants submit, in essence, that the General Court erred in assessing the visual, phonetic and conceptual similarities between the signs at issue. They thus complain that the General Court erred in holding, in paragraphs 36 to 54 of the judgment under appeal, that there were no significant differences between those signs in visual, phonetic and conceptual terms, even though such differences do indeed exist. OHIM adopts the same line of argument.

16 In particular, as regards the visual differences, the appellants maintain, inter alia, that the General Court erred in holding, in paragraph 38 of the judgment under appeal, that the letters ‘U’ and ‘I’, which are admittedly different, added respectively in the middle and at the end of the word ‘AYUURI’, are not such as to attract the attention of the consumer, even though, visually, both the double ‘U’ and the addition of the letter ‘I’ at the end of the word in the mark applied for make a substantial difference which attracts the consumer’s attention and changes the perception of the mark ‘AYUR’ to ‘AYUURI’. Furthermore, contrary to what the General Court held in paragraph 39 of that judgment, the presence of the word ‘NATURAL’ in that mark also adds a significant difference between the signs at issue. Furthermore, the graphic elements of the earlier figurative mark are also significant. Consequently, there is, visually, a much less than average degree of similarity as regards the two word marks at issue and a low degree of similarity as regards the mark applied for and the earlier figurative mark.

17 With regard to the phonetic differences, the appellants submit, inter alia, that a straightforward comparison between ‘ayur’ and ‘ayuuri’ alone shows that ‘ayur’ has two syllables, each of which has a distinctly soft sound, whereas ‘ayuuri’ has three syllables, the last syllable of which has an emphatic ‘ri’ sound and the second syllable of which is characterised by the double ‘u’, which is pronounced as a long ‘u’. The fact that consumers are presented with a word which is difficult to pronounce, with that double ‘u’, is likely to make the mark applied for more distinctive. The two marks at issue thus have a markedly different length, vowel structure, rhythm and intonation, with the result that, contrary to what the General Court held in paragraph 46 of the judgment under appeal, there is a low degree of phonetic similarity.

18 As regards the conceptual differences, the appellants take the view that, given that the knowledgeable consumers cannot be identified with sufficient precision, and that, as the General Court held in paragraph 53 of the judgment under appeal, no conceptual comparison is possible for final consumers who have no particular interest in Indian culture or questions of alternative medicine, the Board of Appeal of OHIM acted correctly in concluding that there was no higher than a low degree of conceptual similarity.

19 The appellants conclude that, as there is a low degree of similarity between the signs at issue in all categories of comparison other than that of visual similarity, the overall impression produced by those signs is that there is, in general terms, substantially less than an average degree of similarity, and not ‘at least an average degree of overall similarity’, as the General Court held in paragraph 54 of the judgment under appeal.

20 OHIM, in addition to the arguments put forward by the appellants, which it adopts as its own, adds that the General Court distorted the facts, inasmuch as the findings which it made in paragraphs 47 and 50 of the judgment under appeal concerning the relevant public in the context of its assessment of the conceptual comparison of the signs at issue manifestly disregard the fact that ‘ayurvedic preparations’ are expressly listed in Class 5 of the Nice Agreement and form a necessary part of all the other categories included in Classes 3 and 5 of that agreement, as set out in paragraph 3 of that judgment. The relevant public must be assessed in relation to the relevant goods, which, in the present case, are explicitly described as ‘ayurvedic preparations’. It must be assumed that a person who is a member of the general public or of the professional public who wishes to purchase such a product knows those goods and is therefore familiar with ‘Ayurveda’ treatments. A knowledge of ‘Ayurveda’ is therefore a precondition for the use and purchase of those goods.

21 Furthermore, OHIM criticises the General Court on the ground that, in paragraphs 50 and 51 of the judgment under appeal, it erroneously defined the relevant public and its understanding of the marks at issue by failing to have regard to the established legal principles in that field. By making the knowledge of the term ‘Ayurveda’ dependent on whether part of the public is ‘interested’ in Indian culture, the General Court did not base its analysis on the understanding of the ‘reasonably well informed’ consumer, namely the consumer who is deemed to know the various sub-categories of products included in the market sector concerned, but rather artificially divided the public into consumers familiar with ‘some’ types of cosmetics or medicines, depending on their personal tastes.

22 In addition, OHIM maintains that, in the assessment of the visual comparison of the signs at issue, there is a contradiction between paragraphs 36 and 40 of the judgment under appeal.

23 Three-N-Products Private takes the view that all of the arguments put forward in support of this first part of the single ground of appeal should be rejected as being manifestly inadmissible or, at least, as being manifestly unfounded.

24 As regards the appellants’ arguments complaining that the General Court erred in its assessment of the similarities between the signs at issue, it should be noted at the outset that, under Article 256(1) TFEU and the first paragraph of Article 58 of the Statute of the Court of Justice of the European Union, an appeal lies on points of law only. The General Court has exclusive jurisdiction to find and appraise the relevant facts and to assess the evidence. The appraisal of those facts and the assessment of that evidence thus do not, save where the facts or evidence are distorted, constitute points of law subject, as such, to review by the Court of Justice on appeal (see, inter alia, Case C-104/00 P DKV v OHIM [2002] ECR I-7561, paragraph 22; Case C-16/06 P Les Éditions Albert René v OHIM [2008] ECR I-10053, paragraph 68; and Case C-254/09 P Calvin Klein Trademark Trust v OHIM [2010] ECR I-7989, paragraph 49).

25 It must also be borne in mind that the assessment of the similarities between the signs at issue is factual in nature and, save where the evidence and facts are distorted, is not subject to review by the Court of Justice (see, inter alia, Calvin Klein Trademark Trust v OHIM, paragraph 50, and order of 30 September 2011 in Case C-541/10 P Quinta do Portal v OHIM, paragraph 40).

26 In the present case, it must be held that, by their arguments seeking to establish the erroneous nature of the assessments which the General Court made of the perception of the visual, phonetic and conceptual similarities between the signs at issue, the appellants are attempting to have the Court re-examine the assessments of a factual nature carried out by the General Court, in paragraphs 36 to 53 of the judgment under appeal, on the basis of which the General Court concluded, in paragraph 54 of that judgment, that there is at least an average degree of overall similarity between those signs, without demonstrating or even alleging, in their notice of appeal, that the General Court distorted the evidence or the facts. In those circumstances, in accordance with the case-law referred to in paragraphs 24 and 25 of the present order, the appellants cannot secure a re-examination by the Court of that assessment, with the result that their arguments must be rejected as being manifestly inadmissible.

27 It is true that such a distortion of the facts was formally raised by OHIM as regards the findings which the General Court set out in paragraphs 47 and 50 of the judgment under appeal concerning the relevant public in the context of the assessment of the conceptual comparison of the signs at issue. However, in actual fact, under the pretext of a complaint based on distortion, OHIM is seeking to call into question the factual assessment of the relevant public made by the General Court in that context and to have the Court of Justice substitute its own assessment for that of the General Court. In any event, the General Court’s findings in that regard do not contain anything capable of suggesting that the facts or evidence were distorted at first instance. It follows that those arguments on the part of OHIM must be rejected as being manifestly inadmissible or, in any event, as being manifestly unfounded.

28 As regards OHIM’s argument that, in paragraphs 50 and 51 of the judgment under appeal, the General Court erroneously defined the relevant public and that public’s understanding of the conflicting marks, it must be pointed out that findings relating to the characteristics of the relevant public and to its degree of attention, perception or attitude represent appraisals of fact (see, inter alia, Case C-144/06 P Henkel v OHIM [2007] ECR I-8109, paragraph 51; order of 24 September 2009 in Case C-481/08 P Alcon v OHIM, paragraph 16; and order of 9 July 2010 in Case C-461/09 P The Wellcome Foundation v OHIM, paragraph 20).

29 In the present case, it must be stated that, by such an argument, OHIM is attempting, in essence, as regards the definition of the relevant public and that public’s understanding of the marks at issue, to have the Court of Justice re-examine the factual assessment carried out by the General Court, in paragraphs 50 and 51 of the judgment under appeal, according to which only a part of the relevant public will readily associate the terms ‘Ayurveda’ and ‘ayur’ in respect of the goods at issue. It follows that, as is apparent from paragraph 24 of the present order, such an assessment cannot be subject to review by the Court of Justice on appeal and, since OHIM has not shown that the General Court distorted the facts and the evidence in that regard, that argument must be rejected as being manifestly inadmissible.

30 Furthermore, as regards the complaint that the General Court, in the assessment of the visual comparison of the signs at issue, vitiated its reasoning by a contradiction between paragraphs 36 and 40 of the judgment under appeal, it must be noted that the question whether the grounds of a judgment of the General Court are contradictory is a question of law which is, as such, amenable to judicial review on appeal (see, inter alia, Case C-446/00 P Cubero Vermurie v Commission [2001] ECR I-10315, paragraph 20, and Case C-54/09 P Greece v Commission [2010] ECR I-7537, paragraph 87).

31 However, the fact remains that, in the present case, there is no contradiction between paragraphs 36 and 40 of the judgment under appeal of such a kind as to result in the annulment of that judgment, as OHIM’s reading of those paragraphs in that regard was manifestly selective and incorrect.

32 First, in paragraph 36 of the judgment under appeal, the General Court observes that the marks at issue are visually different, owing to the presence of ‘NATURAL’, two letters ‘U’ and a letter ‘I’ in the mark applied for, namely AYUURI NATURAL. Secondly, in paragraphs 37 to 39 of that judgment, it states, in essence, that, in addition to the fact that the term ‘NATURAL’ will have only secondary importance in the overall impression left by that mark, all the letters of the term ‘AYUR’ are reproduced, in the same order, in ‘AYUURI’, which is the dominant component of the mark, and that, while the letters ‘U’ and ‘I’ added in the middle and at the end of that word are indeed different, they are not such as to attract the attention of the consumer. Therefore, it must be held that paragraph 40 of that judgment, according to which the two word marks at issue, taking each as a whole, bear a high degree of visual similarity, constitutes a finding which is consistent and duly reasoned on the basis of the reasoning set out in paragraphs 36 to 39 of that judgment.

33 Consequently, the first part of the single ground of appeal must be rejected as being, in part, manifestly inadmissible and, in part, manifestly unfounded.

The second part, relating to an error on the part of the General Court in assessing the likelihood of confusion

34 By the second part of their single ground of appeal, the appellants submit, in essence, that, in paragraphs 60 to 65 of the judgment under appeal, the General Court erred in assessing the likelihood of confusion. They thus criticise the General Court on the ground that it failed at law properly to assess the distinctiveness of the earlier trade marks by ignoring the serious lack of distinctiveness of the prefix ‘ayur’ and the inherently weak distinctiveness of the trade mark ‘AYUR’ as a whole. The General Court, they argue, gave inadequate weight to the fact that the earlier marks are only weakly distinctive. OHIM subscribes to those arguments.

35 OHIM adds, however, by way of supplementing those arguments, that the General Court did not satisfy its obligation to state reasons inasmuch as it did not sufficiently justify its subsidiary finding, set out in paragraphs 64 and 65 of the judgment under appeal, that there is a likelihood of confusion even if the weak distinctive character of the earlier marks is taken into account.

36 Three-N-Products Private takes the view that all the arguments put forward in support of this second part of the single ground of appeal should be rejected as being manifestly inadmissible or, at least, as being manifestly unfounded.

37 With regard to the appellants’ argument complaining that the General Court held that there was a likelihood of confusion notwithstanding the allegedly weak distinctive character of the earlier marks, it is important at the outset to bear in mind that the existence of such a likelihood on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (order of 27 April 2006 in Case C-235/05 P L’Oréal v OHIM, paragraph 34 and the case-law cited; Case C-317/10 P Union Investment Privatfonds v UniCredito Italiano [2011] ECR I-5471, paragraph 45; and order of 29 November 2012 in Case C-42/12 P Hrbek v OHIM, paragraph 58).

38 It must also be borne in mind that that global assessment implies some interdependence between the relevant factors, and in particular a similarity between the trade marks, and between the goods or services covered. 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. It is consequently necessary to give an interpretation of the concept of similarity in relation to the likelihood of confusion, the assessment of which depends, in particular, on the recognition of the trade mark on the market and the degree of similarity between the mark and the sign and between the goods or services covered (order in L’Oréal v OHIM, paragraph 35 and the case-law cited, and order in Hrbek v OHIM, paragraph 59).

39 In that respect, since the more distinctive the earlier mark, the greater will be the risk of confusion, trade marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with less distinctive character. It follows that there may be a likelihood of confusion, notwithstanding a low degree of similarity between the trade marks, where the goods or services covered by them are very similar and the earlier mark is highly distinctive (order in L’Oréal v OHIM, paragraphs 36 and 37 and the case-law cited, and order in Hrbek v OHIM, paragraph 60).

40 Although the distinctive character of the earlier mark must thus be taken into account when globally assessing the likelihood of confusion, it is only one factor among others involved in that assessment (order in Hrbek v OHIM, paragraph 61).

41 A line of argument such as that put forward by the appellants would have the effect of disregarding the notion of the similarity of the marks in favour of one based on the distinctive character of the earlier mark, which would then be given undue importance. The result would be that, where the earlier mark is only of weak distinctive character, a likelihood of confusion would exist only where there was a complete reproduction of that mark by the mark applied for, whatever the degree of similarity between the signs in question (order in L’Oréal v OHIM, paragraph 45). Such a result would not, however, be consistent with the very nature of the global appreciation which the competent authorities are required to undertake by virtue of Article 8(1)(b) of Regulation No 40/94 (judgment of 15 March 2007 in Case C-171/06 P T.I.M.E. ART v OHIM, paragraph 41, and order in Hrbek v OHIM, paragraph 62).

42 Consequently, the General Court did not err in law in holding, in paragraphs 64 and 65 of the judgment under appeal, that, even in a case involving earlier marks of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered and that therefore, even if the distinctive character of the earlier marks were considered weak for all of the relevant public, the similarities between the goods in question and the signs at issue set out in paragraph 62 of that judgment would justify the conclusion that there exists a likelihood of confusion. The General Court cannot therefore be criticised for holding that, in the present case, the allegedly weak distinctive character of the earlier marks was not such as to preclude the existence of a likelihood of confusion since, as is apparent from paragraph 62 of that judgment, the goods in question are identical or similar and the signs at issue exhibit at least an average overall degree of similarity.

43 As regards OHIM’s argument criticising the General Court on the ground that it did not provide sufficient reasons for its subsidiary finding, set out in paragraphs 64 and 65 of the judgment under appeal, relating to the weak distinctive character of the earlier mark, suffice it to point out that that argument is directed against grounds included in the judgment purely for the sake of completeness. Complaints directed against grounds included in a judgment of the General Court purely for the sake of completeness must, however, be rejected from the outset as they cannot lead to that judgment being set aside (order of 3 October 2012 in Case C-649/11 P Cooperativa Vitivinícola Arousana v OHIM, paragraph 55 and the case-law cited).

44 Consequently, the second part of the single ground of appeal must be rejected as being manifestly unfounded.

45 It follows from all of the foregoing considerations that neither of the two parts of the single ground relied on by the appellants in support of their appeal can be upheld and that that appeal must therefore be dismissed in its entirety as being, in part, manifestly inadmissible and, in part, manifestly unfounded.

46 Under Article 138(1) of the Rules of Procedure, which applies to appeal proceedings by virtue of Article 184(1) thereof, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since Three-N-Products Private has applied for costs to be awarded against the appellants, and since the latter have been unsuccessful, the appellants must be ordered to pay the costs.

3. The Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) shall bear its own costs.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Shah v Three -N- Products Private Ltd [2013] EUECJ C-14/12 (30 May 2013) URL: http://www.bailii.org/eu/cases/EUECJ/2013/C1412.html Cite as: EU:C:2013:349, ECLI:EU:C:2013:349, [2013] EUECJ C-14/12

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