Sherwin -Williams Sweden v OHMI - Akzo Nobel Coatings International (ARTI) (Judgment) [2014] EUECJ T-12/13 (11 December 2014)

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(Community trade mark — Opposition proceedings — Application for Community trade mark ARTI — Earlier Benelux word mark ARTITUDE and international registration of the earlier Benelux trade mark ARTITUDE — Refusal to register — Likelihood of confusion — Similarity of the signs — Identical or highly similar goods — Article 8(1)(b) of Regulation (EC) No 207/2009)

Sherwin-Williams Sweden AB, established in Märsta (Sweden), represented by L.-E. Ström, lawyer,

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

ACTION brought against the decision of the First Board of Appeal of OHIM of 18 October 2012 (Case R 2085/2011-1), concerning opposition proceedings between Akzo Nobel Coatings International B V and Sherwin-Williams Sweden Group AB,

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

having regard to the application lodged at the Registry of the General Court on 4 January 2013,

having regard to the response lodged at the Registry of the General Court on 2 April 2013,

having regard to the reply lodged at the Registry of the General Court on 15 July 2013,

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 Court, to give a ruling without an oral procedure,

1 On 9 April 2010, Becker Acroma Group Aktiebolag, subsequently replaced by the applicant, Sherwin-Williams Sweden Group AB, filed an application for registration of a Community trade mark with 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 figurative sign reproduced below with the indication of the colour ‘Red HKS 23’:

3 The goods in respect of which registration was sought are in Class 2 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:

– Class 2: ‘Paints including industrial paints; varnishes and lacquers; coatings (paint), primers, enamels for painting; preservatives against rust and against deterioration of wood; colorants; mordants; metals in foil and powder form for painters; powder coatings’.

4 The application for a Community trade mark was published in Community Trade Marks Bulletin No 107/2010 of 14 June 2010.

5 On 31 August 2010, the other party to the proceedings before the Board of Appeal, Akzo Nobel Coatings International B V, filed a notice of opposition against registration of the mark applied for in respect of the goods referred to in paragraph 3 above pursuant to Article 41 of Regulation No 207/2009. The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009.

6 The opposition was based on the following earlier registrations of the word mark ARTITUDE:

– International registration No 872478, of 12 March 2007, with effect in Spain, and of 30 September 2009, with effect in France.

7 Those registrations (‘the earlier trade marks’) covered, inter alia, the following goods in Class 2: ‘Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; dyes; stains’.

8 The opposition was directed against all the goods covered by the mark applied for and was based on all the goods referred to in paragraph 7 above and covered by the earlier trade marks.

9 On 9 August 2011, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation No 207/2009 on the ground that there was a likelihood of confusion in Belgium, the Netherlands and Luxembourg (‘the Benelux’).

10 On 7 October 2011, the applicant filed an appeal with OHIM under Articles 58 to 64 of Regulation No 207/2009 against the decision of the Opposition Division.

11 By decision of 18 October 2012 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the applicant’s appeal. It found that there was, in the Benelux and in France, a likelihood of confusion between the marks at issue.

12 First, the Board of Appeal held that there was some similarity between the marks at issue at the visual and aural levels given the inclusion, at the beginning of the earlier trade marks, of the sequence of letters ‘a’, ‘r’, ‘t’ and ‘i’, which constitutes the sole word element of the mark applied for. Secondly, the Board of Appeal also noted a degree of conceptual similarity between the marks at issue, limited exclusively to the relevant public in France and to French-speakers in the Benelux, as a result of the fact that it could not be ruled out that the sequence of letters ‘art’ at the beginning of the signs at issue might be associated with the concept of ‘art’ by the public in France and the French-speaking public in the Benelux. Accordingly, it held that, in their overall impression, there was a similarity between the marks at issue.

13 Accordingly, the Board of Appeal concluded that, overall, given the visual, phonetic and conceptual similarities, there was a likelihood of confusion in France and the Benelux; that conclusion was confirmed by the application of the principle of interdependence, according to which there may be a likelihood of confusion, despite a low degree of similarity between the marks, where the goods covered by them are identical.

16 The applicant raises a single plea alleging breach of Article 8(1)(b) of Regulation No 207/2009.

17 The applicant argues that, in reaching the finding of a likelihood of confusion in France and the Benelux, the Board of Appeal made three errors. First of all, the relevant public’s level of attention should have been found to be higher than average.

18 Secondly, according to the applicant, the Board of Appeal should have held that the relevant public would be able to recognise both the word element ‘art’ and the play on words on which the earlier trade marks are based as a result of the combination of the words ‘art’ and ‘attitude’, rather than that just the French-speaking part of the relevant public would understand the prefix ‘art’.

19 Thirdly, with respect to the similarity of the marks at issue, the combination of the words ‘art’ and ‘attitude’ constitutes a playful and fanciful play on words and the earlier mark ARTITUDE therefore forms a distinctive whole. By contrast, the prefix ‘art’, which is the only element which the marks at issue have in common, is closely linked to goods in Class 2 and, accordingly, the distinctiveness of that element is low, which is confirmed by the existence of several marks registered in the Benelux, France and Spain for goods falling within Class 2 and which include the prefix ‘art’ or ‘arti’.

20 According to the applicant, those three errors, which it refers to as errors of law, led the Board of Appeal of OHIM to overestimate the scope of the protection granted to the prefix of the earlier trade marks ‘art’ or ‘arti’. Furthermore, the Board of Appeal also underestimated the importance of the figurative and/or stylised elements and colour element of the contested mark.

21 Consequently, the applicant claims that there was no likelihood of confusion between the marks at issue.

22 OHIM contends that, first, the applicant’s arguments with respect to the level of attention of the relevant public, to the existence of a play on words set out in the earlier mark and to the distinctiveness of the prefix ‘art’, and, secondly, the list submitted by the applicant in relation to trade marks registered in the Benelux, France and Spain are inadmissible, for they had not previously been submitted before the First Board of Appeal.

24 As to the argument relating to the consumer’s degree of attention in a certain sector, OHIM submits that it must be corroborated by facts and evidence. In addition, according to OHIM, it may be assumed that the purchase of paint and other similar goods does not entail as high a level of attention as the purchase of other goods, such as specialised building materials, furniture and watches, as referred to in the case-law.

25 With respect to the perception of the word ‘art’, OHIM contends that the Board of Appeal did not rule out the possibility that all of the relevant public could understand it, including in Spain, and that the applicant’s argument in that regard is not relevant. Moreover, OHIM submits that, even if the word ‘art’ were descriptive for a specialised part of the public, it would still be distinctive for the non-specialised public which would focus its attention on the element ‘arti’ which also appears in the trade mark applied for.

26 With respect to the colour and typeface of the trade mark applied for, OHIM contends that nothing prevents the earlier word marks from being represented in the same colour and typeface as the trade mark applied for.

27 In the first place, it must be stated that it is clear from Article 135(4) of the Rules of Procedure of the General Court that the parties’ pleadings may not change the subject-matter of the proceedings before the Board of Appeal.

28 Secondly, under Article 65(2) of Regulation No 207/2009, the purpose of actions brought before the General Court is to review the legality of decisions of the Boards of Appeal of OHIM. Article 76 of that regulation requires the review to 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, to that effect, 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).

29 With regard to the factual context, it follows from Article 76(2) of Regulation No 207/2009 that it is for the parties to supply in due time the evidence upon which they intend to rely. It follows that OHIM may not be accused of any illegality with regard to factual evidence that was not submitted to it. Accordingly, matters of fact which are relied on before the General Court without having been submitted previously before any of the bodies of OHIM must be dismissed (see, by analogy, HOOLIGAN, paragraph 28 above, EU:T:2005:29, paragraphs 19 and 20 and the case-law cited).

30 However, according to the case-law, matters of common knowledge, even where they are submitted before the Court for the first time, cannot be regarded as new (order of 3 June 2009 in Zipcar v OHIM, C‑394/08 P, EU:C:2009:334, paragraph 42, and judgment of 10 November 2011 in LG Electronics v OHIM, C‑88/11 P, EU:C:2011:727, paragraph 30). In that regard, matters of common knowledge are facts which are likely to be known by anyone or which may be learnt from generally accessible sources (see judgments of 22 June 2004 in Ruiz-Picasso and Others v OHIM — DaimlerChrysler (PICARO), T‑185/02, ECR, EU:T:2004:189, paragraphs 28 and 29 and the case-law cited, and of 24 September 2008 in Anvil Knitwear v OHIM — Aprile e Aprile (Aprile), T‑179/07, EU:T:2008:401, paragraph 71).

31 As regards legal arguments, it should be noted that, in proceedings relating to relative grounds for refusal, according to the very wording of Article 76(1), in fine, of Regulation No 207/2009, OHIM is to be restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought.

32 However, first, the criteria for applying a relative ground for refusal are naturally part of the matters of law submitted for examination by OHIM. It should be stated, in that regard, that an issue of law may have to be ruled on by OHIM even when it has not been raised by the parties, if it is necessary to resolve that issue in order to ensure the correct application of Regulation No 207/2009 having regard to the facts, evidence and arguments provided by the parties. Thus the matters of law put forward before the Board of Appeal also include any issue of law which must necessarily be examined for the purpose of assessing the facts and evidence relied on by the parties and for the purpose of allowing or dismissing the claims, even if the parties have not put forward a view on those matters and even if OHIM has omitted to rule on that aspect (see, by analogy, judgment in HOOLIGAN, paragraph 28 above, EU:T:2005:29, paragraph 21).

33 It follows that when a rule of law must be applied or a matter of law must be ruled upon in order to ensure a correct application of Regulation No 207/2009 in the light of the facts, evidence and arguments provided by the parties, a matter of law relating to that issue may be relied upon for the first time before the General Court (see, by analogy, judgment in HOOLIGAN, paragraph 28 above, EU:T:2005:29, paragraph 22).

34 Secondly, although it must rule only on the application of the parties, whose task it is to define the scope of the dispute, the Court is not to be bound merely by the arguments relied upon by the parties in support of their claims, since it would then be forced, in some circumstances, to base its decisions on erroneous legal considerations (see judgment of 28 February 2008 in American Clothing Associates v OHIM (Representation of a maple leaf), T‑215/06, ECR, EU:T:2008:55, paragraph 25 and the case-law cited).

35 It is in the light of those principles that OHIM’s objection that some of the evidence and arguments relied on by the applicant are new and therefore inadmissible must be assessed.

36 First of all, OHIM contends that the applicant’s argument relating to the public’s level of attention is new. The applicant submits that, pursuant to the Court’s settled case-law, where the average consumer does not regularly buy certain goods, as in the case of the goods in question here, his degree of attention should have been considered as higher than the average.

37 While it is true that the applicant did not raise that argument before the Board of Appeal, it should be noted that the fact relied on by the applicant is a matter of common knowledge. More specifically, the fact that the average consumer does not regularly buy goods such as paints, varnishes, lacquers, coatings, primers, enamels for painting, preservatives against rust and against deterioration of wood, colorants, mordants, metals in foil and powder form for painters, and powder coatings is a fact which is likely to be known by anyone or which may be learnt from generally accessible sources. Consequently, contrary to what OHIM submits, the applicant was not required to adduce evidence in that regard. Therefore, this is not a question of evidence which may be regarded as new and, accordingly, as inadmissible (see paragraph 30 above).

38 Secondly, OHIM disputes the admissibility of the list of registered trade marks produced by the applicant. Specifically, the applicant inserted into its application a list of trade marks registered in the Benelux, France and Spain for goods falling within Class 2 which contain the prefix ‘art’ or ‘arti’, as well as documents containing print-outs of those registrations taken from the OHIM database.

39 It is sufficient to note that the list at issue and the items related thereto were produced for the first time before the Court and, consequently, cannot be taken into account. Contrary to what the applicant submits, it is irrelevant that that information and evidence are available for public consultation on the OHIM website. Accordingly, the items above must be excluded without it being necessary to assess their probative value (see, to that effect and by analogy, judgment of 24 November 2005 in Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE), T‑346/04, ECR, EU:T:2005:420, paragraph 19 and the case-law cited; judgment of 29 September 2011 in Procter & Gamble Manufacturing Cologne v OHIM — Natura Cosméticos (NATURAVIVA), T‑107/10, EU:T:2011:551, paragraph 17; and judgment of 27 June 2013, Repsol YPF v OHIM — Ajuntament de Roses (R), T‑89/12, EU:T:2013:335, paragraph 19).

40 Thirdly, OHIM disputes the admissibility of the applicant’s arguments that, on the one hand, the earlier trade marks are a neologism or a play on words, combining the words ‘art’ and ‘attitude’, and, on the other, the distinctiveness of the element ‘art’ is weak.

41 In the present case, it must be pointed out that, before the Board of Appeal, the applicant submitted that there was no likelihood of confusion because the marks at issue were not similar given their visual, phonetic and conceptual differences and in the light of the distinctive or dominant elements of those marks. Specifically, the applicant submitted that, conceptually, the marks at issue were different because the earlier trade marks could be associated with the word ‘attitude’, whereas the trade mark applied for could be associated with the English word ‘arty’. It also pointed out that the earlier trade marks did not contain any distinctive or dominant element, whereas the dominant elements of the trade mark applied for were its red colour, its typeface, and the unusual manner in which the capital letter ‘A’ is written.

42 Therefore, OHIM’s disputing of the argument pertaining to the weak distinctiveness of the element ‘art’ must be dismissed. That argument is an amplification of the argument put forward by the applicant before the Board of Appeal that the earlier trade marks did not contain any distinctive or dominant elements.

43 In any event, the analysis of the neologism constituted by the earlier trade marks and of the distinctiveness of the ‘art’ element thereof are part of the analysis of their distinctiveness, account of which must be taken in order to assess the likelihood of confusion (see, by analogy, judgment of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 24, and judgment of 16 March 2005 in L’Oréal v OHIM — Revlon (FLEXI AIR), T‑112/03, ECR, EU:T:2005:102, paragraph 61). Accordingly, OHIM is required to examine the inherent distinctiveness of an earlier mark, if necessary of its own motion, once opposition proceedings have been brought (judgment in HOOLIGAN, paragraph 28 above, EU:T:2005:29, paragraph 32). OHIM’s argument in that connection must therefore be rejected.

44 According to Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may not 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 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.

45 In addition, under Article 8(2)(a)(ii) and (iii) of Regulation No 207/2009, ‘earlier trade marks’ means, respectively, trade marks registered with the Benelux Office for Intellectual Property and 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.

46 According to settled case-law, the risk that the public may 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 that same line of case-law, the likelihood of confusion must be assessed globally according to the relevant public’s perception of the signs and the goods or services in question, 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 designated (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).

47 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 42 and the case-law cited).

48 It is in the light of the abovementioned principles that the present action must be examined.

49 The applicant has not impugned the Board of Appeal’s finding that the territory in respect of which the likelihood of confusion must be assessed is that of the Benelux, France and Spain. Nor has it disputed the Board of Appeal’s finding that the goods at issue were of interest to the public at large as well as to painters and decorators and that the relevant public included the average consumer. For the purposes of the assessment of the present plea, the Court considers that it is appropriate to start from those premises, which moreover are not disputed by the parties.

50 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).

51 As set out in paragraph 36 above, the Board of Appeal held that the relevant public included the average reasonably well informed and reasonably observant and circumspect consumer. In so doing, the Board of Appeal merely repeated the general wording which appears in the case-law referred to in paragraph 50 above, without expressly referring to the level of attention of the relevant public with respect to the goods at issue in the present case. Accordingly, it must be held that the Board of Appeal implicitly accepted the Opposition Division’s finding that the level of attention of the relevant public was average.

52 However, the applicant submits that, having regard to the category of goods at issue, namely, paints and other goods falling within Class 2, and taking account of the fact that the average consumer does not regularly buy those goods, the Board of Appeal should have held that the degree of attention of that consumer was greater than average, in accordance with the settled case-law of the Court.

53 In that regard, it must be noted that, according to the settled case-law of the Court, the fact that a type of product is not purchased regularly by the average consumer suggests that that consumer’s level of attention will be fairly high (see judgments of 12 January 2006 in Devinlec v OHIM — TIME ART (QUANTUM), T‑147/03, ECR, EU:T:2006:10, paragraph 63, and of 13 October 2009 in Deutsche Rockwool Mineralwoll v OHIM — Redrock Construction (REDROCK), T‑146/08, EU:T:2009:398, paragraph 45). Moreover, as correctly noted by the applicant, the consumer’s choice of paint and other products in Class 2 encompasses several considerations, namely, functional considerations such as the suitability of the material to the surface that is to be painted or treated, whether the surface concerned is located indoors or outdoors, and aesthetic considerations. Those sorts of considerations require a comparison and some reflection before a choice is made, and therefore a high level of attention.

54 Accordingly, the applicant’s argument that the degree of attention of the relevant public must be considered higher than average must be upheld, with the result that the Board of Appeal incorrectly found that the relevant public had an average level of attention.

55 The Board of Appeal found, without being contradicted on this point by the applicant, that the goods at issue were in part identical and in part highly similar. For the purposes of the assessment of the present plea, the Court considers that it is appropriate to start from that finding, which moreover is not disputed by the parties.

56 According to settled case-law, two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects. As is apparent from the case-law of the Court, the visual, phonetic and conceptual aspects are relevant (see judgment of 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 30 and the case-law cited).

57 As regards the visual comparison, it must be recalled, first of all, that there is nothing to prevent an assessment of the visual similarity between a word mark and a figurative mark, since the two types of mark have a graphic form capable of creating a visual impression (see judgment of 4 May 2005 in Chum v OHIM — Star TV (STAR TV), T‑359/02, ECR, EU:T:2005:156, paragraph 43 and the case-law cited).

58 In the present case, the Board of Appeal found that there was some visual similarity between the earlier trade marks and the trade mark applied for, based on the root ‘arti’ at the beginning of earlier trade marks which are the sole word element of the trade mark applied for.

59 In that regard, it should be noted that the reasoning of the Board of Appeal focused on the first four letters ‘a’, ‘r’, ‘t’ and ‘i’, without expressly examining the earlier mark ARTITUDE as a whole, in the light of the visual impact of the second half of that mark, comprised of the letters ‘t’, ‘u’, ‘d’ and ‘e’. In the visual assessment of the signs at issue, account should be taken, in particular, of the length of the word elements of which they are comprised. As correctly submitted by the applicant, the fact the earlier trade marks are composed of eight letters and that they are therefore twice as long as the trade mark applied for shows a clear visual difference between the marks at issue.

60 The same is true of the fact that the trade mark applied for is a figurative mark, bearing the marking ‘Red HKS 23’ relating to its colour; the figurative nature of the mark is further underscored by the fact that its typeface is composed of bold letters. As the applicant also correctly observes, the typeface used for the trade mark applied for is distinctive. Finally, the first letter comprising the trade mark applied for, namely the capital letter ‘A’, is represented unusually, in that its shape is altered so as to be brought into line harmoniously with the second capital letter of which the ARTI mark is comprised, namely the letter ‘R’.

61 Contrary to OHIM’s argument, the visual differences between the marks at issue cannot be set aside on the basis of the argument that nothing prevents the representation of the earlier word marks from being of the same colour and in the same typeface as the trade mark applied for. That premise is, admittedly, relevant where the word element of the figurative mark is considered the dominant element and that the figurative elements are considered secondary (see to that effect ARTHUR ET FELICIE, paragraph 39 above, paragraphs 46 and 47). However, the Board of Appeal held in the present case that the figurative elements of the trade mark applied for were as important as the word element.

62 Notwithstanding the significant visual differences between the marks at issue, such as the length of the word elements, as well as the colour, typeface, and unusual manner in which the capital letter ‘A’ is presented in the figurative mark applied for, it should, however, be recalled that it is settled case-law that the consumer normally attaches more importance to the first part of words in the overall visual appraisal of the signs in issue (judgment of 17 March 2004 in El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 et T‑184/02, ECR, EU:T:2004:79, paragraph 81). In that regard, it is indisputable that the marks at issue have the root ‘arti’ in common. Accordingly, where all those elements are weighed against each other, it must be concluded that there is a weak visual similarity between the marks at issue.

63 The Board of Appeal held that there was some phonetic similarity between the marks at issue as the two syllables which make up the trade mark applied for were identically present in the earlier mark. It dismissed the applicant’s argument that the stress on the first two syllables of the earlier trade marks is different from that placed on the trade mark applied for, on the ground that that argument was not substantiated.

64 The phonetic analysis of the marks at issue is an essential element in the assessment of the similarity of those marks and, thereafter, of the likelihood of confusion (see paragraph 56 above). In general, the assessment of a claim asserting that, in a specific language, the phonetic stress is placed on one or more syllables does not depend on additional evidence. That is so in the present case. Accordingly, the Board of Appeal may not dispense with an analysis of such a claim on the ground that it has not been substantiated.

65 In the present case, the earlier trade marks (ARTITUDE) are comprised of three syllables, ‘ar’, ‘ti’ and ‘tude’, whereas the trade mark applied for (ARTI) is comprised of only two syllables, ‘ar’ and ‘ti’. The trade mark applied for thus shares the first two syllables with the earlier mark but contains one syllable less, which constitutes a not insignificant difference between the marks at issue.

66 With respect to the applicant’s argument concerning the phonetic analysis of the stress placed on the various syllables of the marks at issue, it must be observed that, in relation to the public in France and the French-speaking public in the Benelux, the only publics in respect of which the Board of Appeal found there was a likelihood of confusion, there is an important difference in that regard. In French, the stress is placed on the third syllable ‘tude’ of the earlier word marks. This is important as the suffix ‘tude’ is not present in the trade mark applied for. By contrast, in the trade mark applied for, the stress is placed on the second syllable ‘ti’.

67 It follows that, notwithstanding the fact that the signs at issue have their first two syllables in common, given the existence of a third syllable in the earlier mark and the difference in the pronunciation of the marks in question in French, those marks are phonetically similar only to an average degree for the relevant public in France and the French-speaking public in the Benelux.

68 In the present case, the Board of Appeal found, with respect only to the public in France and the French-speaking public in the Benelux, that there was a degree of conceptual similarity between the marks at issue based on the presence of the root ‘art’ in those marks. Specifically, it found that, having regard to the nature of the goods at issue, it could not be excluded that the root ‘art’ could be associated with the concept of ‘art’ by the public in France and by the French-speaking public in the Benelux.

69 With respect to the conceptual similarity, it should be noted, first, that, in accordance with settled case-law, when perceiving a word sign, a consumer will break it down into elements which, for him, suggest a concrete meaning or which resemble words known to him (judgments in RESPICUR, paragraph 50 above, EU:T:2007:46, paragraph 57, and of 20 October 2011 in COR Sitzmöbel Helmut Lübke v OHIM — El Corte Inglés (COR), T‑214/09, EU:T:2011:612, paragraph 46; see, to that effect, judgment of 6 October 2004 in Vitakraft-Werke Wührmann v OHIM — Krafft (VITAKRAFT), T‑356/02, ECR, EU:T:2004:292, paragraph 53).

70 It should be noted that the public in France and the French-speaking public in the Benelux identify in the earlier ARTITUDE word marks not just the word ‘art’, but also the word ‘attitude’.

71 Moreover, the conceptual whole constituted by the earlier mark ARTITUDE is important. The play on the words ‘art’ and ‘attitude’ is playful and fanciful, as correctly noted by the applicant. In that regard, the Court recalls that, as a general rule, a fanciful word is more likely to draw the attention of the consumer (see, to that effect, judgment in MATRATZEN, paragraph 56 above, EU:T:2002:261, paragraph 43).

72 With respect to the ARTI trade mark applied for, it can by no means be associated with the play on the words ‘art’ and ‘attitude’. The idea created by the trade mark applied for is therefore different. The word ‘arti’ could be perceived as a shortening of the words ‘artist’ or ‘artistic’ by the French or French-speaking consumer. Overall, conceptually, it is only weakly similar to the earlier mark.

73 In order to reach the conclusion that there was a degree of conceptual similarity between the marks at issue, the Board of Appeal merely analysed the conceptual similarity of those marks by relying only on the fact that they have the letters ‘art’ in common.

74 It must be borne in mind, in that regard, that the assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks at issue as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components. It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraphs 41 and 42 and the case-law cited).

75 As the applicant correctly notes, the root ‘art’ constitutes an element of low distinctiveness rather than a dominant element. For the purpose of assessing the distinctive character of an element making up a mark, an assessment must be made of the greater or lesser capacity of that element to identify the goods or services for which the mark was registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings. In carrying out that assessment, account should be taken of the inherent characteristics of the element in question in the light of whether it is at all descriptive of the goods or services for which the mark has been registered (judgments of 13 June 2006 in Inex v OHIM — Wiseman (Representation of a cowhide), T‑153/03, ECR, EU:T:2006:157, paragraph 35, and of 12 July 2012 in Winzer Pharma v OHIM — Alcon (BAÑOFTAL), T‑346/09, EU:T:2012:368, paragraph 78). The root ‘art’ is strongly allusive with respect to the goods at issue and therefore constitute an element of low imagination to refer to paints, varnishes, lacquers and dyes, goods falling within Class 2.

76 In that regard, the Court has stated that the public will not generally regard a descriptive element forming part of a composite mark as the distinctive and dominant element of the overall impression conveyed by that mark (judgment of 3 July 2003 in Alejandro v OHIM — Anheuser-Busch (BUDMEN), T‑129/01, ECR, EU:T:2003:184, paragraph 53).

77 Analogous considerations apply to elements which have a very general meaning suggesting a positive quality attributable to a large range of different goods or services (judgment in VITAKRAFT, paragraph 69 above, EU:T:2004:292, paragraph 52). As the applicant has correctly noted, the letters ‘art’ are also likely to suggest a positive quality attributable to goods falling within Class 2, such as paints, namely, the artistic or creative qualities thereof, which qualities are necessarily alluded to by the word ‘art’.

78 Consequently, according to the above case-law, the root ‘art’, which is present in the marks at issue, cannot be considered to be the distinctive and dominant element in the overall impression produced by those marks.

79 Accordingly, given the playful and fanciful play on words resulting from the combination of the words ‘art’ and ‘attitude’ in the earlier mark and the idea created by the trade mark applied for, which is perceived rather as an abbreviation of the word ‘artist’ or ‘artistic’, it must be held that the fact that the marks at issue have the root ‘art’ in common, which is not very distinctive in the present case, results in weak conceptual similarity.

80 Moreover, the fact, relied on by the applicant, that the play on words relating to the combination of the words ‘art’ and ‘attitude’ might possibly be understood by the relevant public, inasmuch as it understands English, and by the relevant public in Spain, is not relevant. That claim has no bearing on the Board of Appeal’s finding of a likelihood of confusion in France and with respect to the French-speaking public in the Benelux.

81 Consequently, it must be held that the signs at issue are only weakly similar visually and conceptually and that they are phonetically similar to an average degree.

82 It must be borne in mind that the global assessment of the likelihood of confusion implies some interdependence of the factors taken into account and, in particular, of the similarity of the trade marks and that of 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 (see judgment of 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74).

83 Here, it is not disputed that the marks at issue refer to goods which are in part identical and in part highly similar. Accordingly, the weak similarity of the marks at issue, which is to be inferred from the Court’s findings that the signs at issue are visually and conceptually only weakly similar and phonetically similar only to an average degree, is offset by the strong similarity of the goods covered by those marks.

84 It follows that the Board of Appeal correctly found that there is a likelihood of confusion between the trade mark applied for and the earlier trade marks in France and the Benelux.

85 That finding is not called into question by the fact that the level of attention of the relevant public must be considered as higher than average (see paragraph 54 above). The circumstance that the relevant public displays a greater than average degree of attention is not sufficient to make it inconceivable that that public could believe that the goods covered by the marks at issue have the same commercial origin, given the strong similarity between the goods covered by those marks and the degree of similarity existing between them (see, to that effect and by analogy, judgments of 15 June 2011 in Graf-Syteco v OHIM — Teco Electric & Machinery (SYTECO), T‑229/10, EU:T:2011:273, paragraph 40, and of 15 November 2011 in Hrbek v OHIM — Outdoor Group (ALPINE PRO SPORTSWEAR & EQUIPMENT), T‑434/10, EU:T:2011:663, paragraph 73).

86 It follows from all of the foregoing that the single plea in law put forward by the applicant must be rejected and, consequently, the applicant’s action dismissed in its entirety.

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

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

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Sherwin -Williams Sweden v OHMI - Akzo Nobel Coatings International (ARTI) (Judgment) [2014] EUECJ T-12/13 (11 December 2014) URL: http://www.bailii.org/eu/cases/EUECJ/2014/T1213.html Cite as: [2014] EUECJ T-12/13, ECLI:EU:T:2014:1054, EU:T:2014:1054

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