Nuna International v OHMI - Nanu-Nana Joachim Hoepp (nuna) (Judgment) [2014] EUECJ T-195/12 (23 September 2014)

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(Community trade mark — Opposition proceedings — Application for the Community figurative mark nuna — Earlier Community word marks NANA and NANU-NANA — Relative ground for refusal — No likelihood of confusion — No similarity between the goods — Article 8(1)(b) of Regulation (EC) No 207/2009)

Nuna International BV, established in Erp (Netherlands), represented by A. Alpera Plazas, lawyer,

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

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

Nanu-Nana Joachim Hoepp GmbH & Co. KG, established in Bremen (Germany), represented by A. Nordemann, lawyer,

ACTION brought against the decision of the First Board of Appeal of OHIM of 15 February 2012 (Case R 476/2011-1), relating to opposition proceedings between Nanu-Nana Joachim Hoepp GmbH & Co. KG and Nuna International BV,

composed of S. Papasavvas, President, N.J. Forwood and E. Bieliūnas (Rapporteur), Judges,

having regard to the response of OHIM lodged at the Court Registry on 14 August 2012,

having regard to the response of the intervener lodged at the Court Registry on 27 August 2012,

having regard to the decision of 14 November 2012 not to allow the lodging of a reply,

1 On 30 August 2007, the applicant, Nuna International BV, 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 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).

3 The goods in respect of which registration was sought are in Classes 12, 18, 20, 21, 25 and 28 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:

– Class 20: ‘Cribs; high chairs; baby walkers; bouncing seats; baby rocking chairs; sleeping bags for baby and children; carry cots’;

– Class 25: ‘Diapers (textile); foot muffs for baby and children, foot muffs for push-chairs and infant car seats’;

4 The Community trade mark application was published in Community Trade Marks Bulletin No 4/2008 of 28 January 2008.

5 On 28 April 2008, the intervener, Nanu-Nana Joachim Hoepp GmbH & Co. KG, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the mark applied for in respect of the goods referred to in paragraph 3 above.

– the Community word mark NANA filed on 22 August 2007 and registered on 19 April 2011 under the number 6218945 for goods in, inter alia, the following classes:

– Class 18: ‘Leather and imitations of leather, and goods made of these materials (included in class 18); bags of all kinds (included in class 18); pocket wallets, purses; cases of all kinds (included in class 18); umbrellas, parasols and walking sticks; travel requisites and parts therefor (included in class 18)’;

– Class 20: ‘Furniture, mirrors, picture frames; goods, included in class 20, of cork, reed, cane, wicker, other plant braiding, horn, bone, ivory, shell, amber, mother-of-pearl, meerschaum; in particular waste paper baskets, linen bins, bread baskets, animal transport baskets; dolls’ furniture; wooden flowers, wood boxes; household requisites, namely coatstands, newspaper display stands, curtain rods; cushions; scarecrows of straw; straw dolls; mannequins; hand mirrors (cosmetic mirrors, toilet mirrors); inflatable figurines; wind and bell chimes being decorative articles; decorative articles of wood; cork and plant braiding; dressing tables’;

– Class 21: ‘Candlesticks, glassware, porcelain, earthenware (included in class 21), household items, namely storage containers, stoves, butter dishes, salt and pepper mills, trays, dustbins; kitchen utensils, namely cooking spoons, storage baskets, kitchen scales, strainers, whisks, skimmers, fish slices, corkscrews, bottle openers; dishes; stands for bowls; garden vessels, flower pots, bins; money boxes of plastic; toilet cases, toilet utensils, non-electric appliances for removing make-up, hair brushes, nail brushes, perfume sprayers, powder cases (not of precious metal), shaving brushes and shaving brush stands, toilet paper holders, toothbrushes and dental floss; decorative articles of plastic, glass, porcelain, earthenware; piggy banks (not being of metal)’;

– Class 28: ‘Gymnastic and sporting equipment and articles; games; playing cards, playthings, decorations for Christmas trees; novelty articles, dolls, plush articles, marionettes’.

– the Community word mark NANU-NANA filed on 21 August 2007 and registered on 11 April 2011 under the number 6217814 for goods in, inter alia, the following classes:

– Class 18: ‘Leather and imitations of leather, and goods made of these materials (included in class 18); bags of all kinds (included in class 18); wallets, purses; cases of all kinds (included in class 18); umbrellas, parasols and walking sticks; travel requisites and parts therefor (included in class 18)’;

– Class 20: ‘Furniture; mirrors and picture frames; goods, included in class 20, of cork, reed, cane, wicker, other plant braiding, horn, bone, ivory, shell, amber, mother-of-pearl, meerschaum; scarecrows of straw; straw dolls; mannequins; hand mirrors (cosmetic mirrors, toilet mirrors); inflatable figurines; decorative articles of wood, cork and plant braiding; dressing tables’;

– Class 21: ‘Glassware, porcelain and earthenware (included in class 21); dishes; stands for bowls; garden vessels, flower pots, bins; money boxes of plastic; toilet cases, toilet utensils, non-electric appliances for removing make-up, hair brushes, nail brushes, perfume sprayers, powder cases (not of precious metal), shaving brushes and shaving brush stands, soap boxes, soap holders, dishes for soaps and soap dispensers, toilet paper holders, toothbrushes and dental floss; candlesticks (not of precious metal); decorative articles of plastic, glass, porcelain, earthenware’;

– Class 25: ‘Ready-made clothing for women, men and children; headgear; footwear’;

– Class 28: ‘Games and playthings, playing cards, gymnastic and sporting apparatus and articles; decorations for Christmas trees; dolls’.

7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009). The opposition was directed against all the goods covered by the mark applied for and was based on all the goods covered by the earlier marks.

8 On 17 February 2011, the Opposition Division rejected the opposition on the ground that there was no likelihood of confusion.

9 On 1 March 2011, the intervener filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.

10 By decision of 15 February 2012 (‘the contested decision’), the First Board of Appeal of OHIM upheld the appeal.

11 In particular, first, the Board of Appeal noted that the goods covered by the earlier marks, like those covered by the mark applied for, related to the general public. Secondly, it found that the goods in Classes 18, 21 and 28 covered by the mark applied for were identical to the goods covered by the earlier marks. It also considered that the goods in Class 25 covered by the mark applied for were, in part, identical and, in part, similar to the goods covered by the earlier mark NANU-NANA. Furthermore, it found that the goods in Class 12 covered by the mark applied for were similar to the ‘playthings’ covered by the earlier marks. Lastly, it found that the goods in Class 20 covered by the mark applied for were, in part, similar to the ‘playthings’ and the ‘furniture’ and, in part, similar to the ‘playthings’ covered by the earlier marks. Thirdly, it found that the sign applied for was similar overall to the sign NANA and that the degree of similarity was slightly lower with respect to the sign NANU-NANA.

12 It concluded that there was a likelihood of confusion between the sign applied for and the earlier marks with respect to all the goods covered by that sign.

15 At the hearing, the applicant withdrew its second head of claim, of which the Court took formal note in the minutes of the hearing.

16 The applicant requests the annulment of the contested decision on the ground that there is no likelihood of confusion between the mark applied for and the earlier marks in the present case. The applicant therefore, in essence, puts forward a single plea in law alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

17 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.

18 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically‑linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (see Case T‑162/01 Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).

19 In paragraph 23 of the contested decision, the Board of Appeal found that as regards the Community trade marks NANA and NANU-NANA the relevant territory in the present case was that of the European Union. That assessment is correct and is not, moreover, disputed by the applicant.

20 Furthermore, 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 Case T‑256/04 Mundipharma v OHIM — Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).

21 In the present case, the Board of Appeal found that the goods covered by the earlier marks, like the goods covered by the mark applied for, were aimed at the general public. It also took the view that the average consumer of the goods concerned was to be regarded as reasonably well informed and reasonably observant and circumspect (paragraphs 21 and 22 of the contested decision).

22 The applicant disputes that assessment and claims that parents who buy goods for their babies must be categorised as specialist consumers whose level of attention is much higher than that of average consumers. It submits that the goods covered by the mark applied for, as goods specifically intended for babies, are expensive purchases and that they have to comply with certain safety requirements. Lastly, it maintains that the earlier marks do not have any reputation in the European Union.

24 It must be pointed out that although, as the applicant submits, the parents of babies and young children may have a high level of attention when purchasing the goods covered by the mark applied for, the group of average consumers of those goods will not in any case consist exclusively, or even principally, of particularly attentive parents (see, to that effect, as regards ‘foods for babies and infants’, judgment of 28 March 2012 in Case T‑41/09 Hipp v OHIM — Nestlé (Bebio), not published in the ECR, paragraph 29 and the case-law cited).

25 Furthermore, as the Board of Appeal correctly stated in paragraph 22 of the contested decision, the target public for the goods covered by the mark applied for consists not only of parents, but also of persons who wish to buy those goods as gifts.

26 In addition, since those goods are marketed in the European Union, consumers will expect them to comply with acceptable safety standards.

27 Lastly, it must be pointed out that the reasoning followed in the judgment in Case C‑361/04 P Ruiz Picasso and Others v OHIM [2006] ECR I‑643, paragraph 39, which is relied on by the applicant, cannot apply in the present case. It is apparent from that judgment that the average consumer displays a particularly high level of attention when purchasing motor vehicles, in view of the nature of those goods and, in particular, ‘their price and their highly technological character’. The goods covered by the mark applied for are much lower in price than motor vehicles and are much less technological in character.

28 The alleged lack of reputation of the goods covered by the earlier marks, which the applicant puts forward, is irrelevant because the opposition which the intervener brought before OHIM was not based on such a reputation.

29 The Board of Appeal was therefore right to find that the relevant public consisted of average, reasonably well-informed and reasonably observant and circumspect consumers in the European Union.

30 According to settled case-law, in order to assess the similarity between the goods concerned, all the relevant factors of the relationship between those goods should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see Case T‑443/05 El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37 and the case-law cited).

31 It should also be borne in mind that the comparison of the goods required by Article 8(1)(b) of Regulation No 207/2009 must relate to the description, as it appears in the registration document, of the goods covered by the earlier mark relied on in opposition and not to the goods for which that mark is actually used unless, following a request for proof of genuine use of the earlier mark, in accordance with Article 42(2) and (3) of Regulation No 207/2009, such proof is furnished only in respect of part of the goods or services for which the earlier mark is registered (see, to that effect, Case T‑346/04 Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 35).

32 However, under Article 42(2) of Regulation No 207/2009 the opposing party is obliged to provide, at the applicant’s request, proof of genuine use of the earlier mark only ‘provided the earlier Community trade mark has at [the date of publication of the application for registration] been registered for not less than five years’. Consequently, where the earlier mark relied on in support of the opposition has been registered for less than five years before the publication of the application for registration of a Community trade mark, proof of genuine use cannot yet be required and the earlier mark must be deemed to have been used (see judgment of 16 May 2012 in Case T‑580/10 Wohlfahrt v OHIM − Ferrero (Kindertraum), not published in the ECR, paragraph 18 and the case-law cited).

33 In the present case, the applications for the Community word marks NANU‑NANA and NANA were filed by the intervener on 21 and 22 August 2007 respectively. The marks were then registered on 11 and 19 April 2011 (see paragraph 6 above). It is therefore common ground that, as at the date of publication of the application for registration of the mark, namely 28 January 2008, the earlier marks had not been registered for at least five years.

34 It follows that the applicant cannot require proof of genuine use of the earlier marks and that those marks must be deemed to have been used in connection with all the goods at issue in respect of which they were registered.

35 It is therefore necessary to reject the applicant’s argument alleging that the intervener has not furnished proof that it sells or manufactures the goods covered by the mark applied for that were found to be identical or similar to those covered by the earlier marks by the Board of Appeal in the contested decision.

36 The applicant submits that, in the contested decision, the Board of Appeal erred in finding that the goods in Classes 18, 21 and 28 covered by the mark applied for were identical to the goods covered by the earlier marks.

38 According to the case-law, goods can be considered to be identical when the goods covered by the trade mark application are included in a more general category covered by the earlier mark (see Case T‑133/05 Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP) [2006] ECR II‑2737, paragraph 29 and the case-law cited).

39 In the present case, it must be held that the ‘baby carrier bags; diaper bags [and] backpacks for children’ in Class 18 covered by the mark applied for are included in the broader category of ‘bags of all kinds’ in Class 18 covered by the earlier marks. In the same way, the ‘swings for children’ in Class 28 covered by the mark applied for are included in the broader category of ‘playthings’ in Class 28 covered by the earlier marks.

40 The fact, relied on by the applicant, that the mark applied for covers only goods intended for infants and children cannot, in the present case, affect the identity of the goods in question and, in particular, their nature and intended purpose. Given that the goods covered by the earlier marks may also be intended for infants and children, the reference to that specific public in the application for the Community trade mark does not affect the identity of the goods in question (see, to that effect, ARTHUR ET FELICIE, paragraph 38).

41 It follows that the Board of Appeal did not make an error of assessment in finding that the goods in Classes 18 and 28 covered by the mark applied for were identical to the goods in those classes covered by the earlier marks.

42 As regards the ‘cups [and] bowls for baby and children’ in Class 21 covered by the mark applied for, the applicant submits that it is common knowledge that, for safety reasons, cups and bowls for babies and children are always made of plastic and are never made of ordinary glass.

43 However, the Board of Appeal correctly pointed out, in paragraph 28 of the contested decision, that the goods in Class 21 covered by the mark applied for could be made of glass. Parents may choose not to use cups and bowls made of plastic for their children and prefer the use of cups and bowls made of glass that are manufactured by the same undertakings as those that produce cups and bowls for adults and are marketed through the same distribution channels.

44 In the light of the foregoing, the Board of Appeal cannot be criticised for finding that the goods in Class 21 covered by the mark applied for were identical to the goods in that class covered by the earlier marks.

45 The Board of Appeal, in paragraph 28 of the contested decision, confirmed the Opposition Division’s assessment that the ‘diapers (textile)’ and ‘foot muffs for baby and children’ were identical to the clothing for children in Class 25 covered by the earlier mark NANU-NANA. Furthermore, it found that the ‘foot muffs for push-chairs and infant car seats’ were similar to the clothing in Class 25 covered by that earlier mark.

46 According to the applicant, the Board of Appeal erred in finding that the ‘diapers (textile)’ and ‘foot muffs for baby and children’ in Class 25, on the one hand, were identical to the clothing for children covered by the earlier mark NANU‑NANA, on the other hand. It submits that the goods covered by the mark applied for serve a specific purpose and are again aimed at specialist consumers. It adds that diapers and foot muffs cannot be regarded as clothing.

48 As OHIM points out, diapers (textile) and foot muffs for babies and children are aimed at the same users as those of the clothing for children covered by the earlier mark NANU-NANA. Those goods are generally manufactured by the same companies and sold in the same retail shops.

49 Consequently, the Board of Appeal did not err in finding that the ‘diapers (textile)’ and ‘foot muffs for baby and children’ in Class 25 were identical to the ‘clothing for children’ covered by the earlier mark NANU-NANA. The Board of Appeal was also right in finding that the ‘foot muffs for push-chairs and infant car seats’ were similar to the clothing covered by that earlier mark.

50 The applicant disputes the Board of Appeal’s assessment in paragraph 34 of the contested decision that the ‘strollers, buggies [and] safety car seats for children’ in Class 12 are similar to the ‘playthings’ and ‘games and playthings, dolls’ in Class 28 covered by the earlier marks.

51 In that regard, it must be stated that ‘strollers, buggies [and] safety car seats for children’ make it possible to transport or carry babies or children. By contrast, the goods in Class 28 covered by the earlier marks provide a means for babies or children to play and are thus used for recreational purposes. The intended purpose and method of use of the goods in question must therefore be held to be different.

52 It also follows that the goods in question are not interchangeable and are not therefore in competition with each other.

53 In paragraph 32 of the contested decision, the Board of Appeal stated that playthings for babies were usually physically attached to strollers, buggies or safety car seats for children. However, that fact alone does not make it possible to conclude that there is a complementary connection between the goods in question.

54 According to the case-law, complementary goods and services are those which are closely connected in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services. By definition, goods and services intended for different publics cannot be complementary (see Case T‑316/07 Commercy v OHIM — easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraphs 57 and 58 and the case-law cited).

55 In the present case, it must be admitted that some playthings covered by the earlier marks can be fastened to the goods in Class 12 covered by the mark applied for, namely strollers, buggies and safety car seats for children. However, the actual use of the playthings is optional and is not therefore indispensable or important for the use of strollers, buggies or safety car seats for children.

56 In addition, although it is true that the goods in question may be used together and that playthings may be designed to be fastened to strollers, buggies and safety car seats for children, that argument is too general to justify, on its own, the finding that those goods are complementary.

57 Furthermore, it is true that the intervener has shown that one undertaking manufactures both of the categories of goods in question. However, it is on the basis of that one example that the Board of Appeal found that certain undertakings manufacture both categories of goods.

58 Consequently, the contested decision does not show that a large number of the manufacturers of both of the categories of goods are the same and that consumers perceive manufacturers of strollers, buggies and safety car seats for children as also producing playthings. It does not, in addition, show that consumers consider it normal for the goods in Class 12 covered by the mark applied for and the goods in Class 28 covered by the earlier marks to be marketed under the same trade mark.

59 Lastly, it must be pointed out that the fact that the goods in question may be sold in the same commercial establishments, such as department stores or supermarkets, is not particularly significant, since very different kinds of goods may be found in such shops, without consumers automatically believing that they have the same origin (see judgment of 26 October 2011 in Case T‑72/10 Intermark v OHIM — Natex International (NATY’S), not published in the ECR, paragraph 37 and the case-law cited), or even a complementary connection.

60 The Board of Appeal therefore erred in finding that there could be a complementary connection between the ‘strollers, buggies [and] safety car seats for children’ in Class 12 and the ‘playthings’ and ‘games and playthings, dolls’ in Class 28 covered by the earlier marks.

61 In view of the foregoing, the Board of Appeal made an error of assessment when it found that the goods in question were similar.

62 In the first place, the Board of Appeal found that the ‘sleeping bags for baby and children’ and ‘baby walkers’ in Class 20 covered by the mark applied for were similar to the ‘playthings’ in Class 28 covered by the earlier marks (paragraph 35 of the contested decision). In the second place, it came to the conclusion that the ‘cribs; high chairs; bouncing seats; baby rocking chairs and carry cots’ in Class 20 covered by the mark applied for were similar to two categories of goods covered by the earlier marks, namely ‘furniture’ in Class 20 and ‘playthings’ in Class 28 (paragraph 36 of the contested decision).

63 The applicant disputes the Board of Appeal’s assessments for reasons relating to a difference in the nature, intended purpose and distribution channels of the goods in question.

64 It must be pointed out that it was by analogy with the analysis carried out with regard to the goods in Class 12 that the Board of Appeal found that the ‘sleeping bags for baby and children’, ‘baby walkers’, ‘cribs; high chairs; bouncing seats; baby rocking chairs and carry cots’ in Class 20 covered by the mark applied for were similar to the playthings in Class 28 covered by the earlier marks.

65 That assessment is, however, incorrect for reasons similar to those set out in paragraphs 51 to 59 above. In the contested decision, the Board of Appeal did not show that the goods in Class 20 covered by the mark applied for were similar to playthings, inter alia on the basis of their nature, their intended purpose, and their method of use or on the basis of whether they are in competition with each other or are complementary.

66 That finding cannot be called into question by the documents which the intervener provided in Annex 14 to its response to show that ‘baby walkers’ may be designed to be both playthings and walkers. The purpose of actions before the General Court is to review the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009, so it is not the Court’s function to review the facts in the light of documents produced for the first time before it. The abovementioned documents must therefore be excluded from consideration, without it being necessary to assess their probative value (see, to that effect, ARTHUR ET FELICIE, paragraph 19 and the case-law cited).

67 In view of the foregoing, the Board of Appeal erred in finding, in paragraphs 35 and 36 of the contested decision, that there was a similarity between, on the one hand, the ‘sleeping bags for baby and children’, ‘baby walkers’, ‘cribs; high chairs; bouncing seats; baby rocking chairs and carry cots’ in Class 20 covered by the mark applied for and, on the other hand, the ‘playthings’ in Class 28 covered by the earlier marks.

68 However, it is necessary to reject the applicant’s arguments that there is no similarity between the ‘cribs; high chairs; bouncing seats; baby rocking chairs and carry cots’ and the ‘furniture’ in Class 20 covered by the earlier marks.

69 The applicant does not dispute the Board of Appeal’s analysis that the goods in Class 20 covered by the mark applied for are pieces of furniture designed to occupy a specific place and serve a specific purpose in the home and that that does not change their nature as furniture.

70 Furthermore, the fact that the goods covered by the mark applied for are sold in shops specialising in children’s goods is not sufficient to establish that there is no similarity between the goods at issue. Moreover, the applicant concedes that the goods covered by the mark applied for may be sold in ordinary furniture shops.

71 Lastly, it is also necessary to reject the applicant’s arguments alleging, first, that the goods at issue are targeted at a specific public and, secondly, that parents will pay more attention to what they are buying on the ground that that may affect the health and safety of their babies. As is apparent from paragraphs 24 to 29 above, those arguments are based on an incorrect view of the relevant public used in the present case.

72 In those circumstances, the Board of Appeal’s assessment must be upheld in so far as it found that the ‘cribs; high chairs; bouncing seats; baby rocking chairs and carry cots’ in Class 20 covered by the mark applied for were similar to the ‘furniture’ in that class covered by the earlier marks.

73 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global appreciation of such likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).

74 In addition, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must rely on his imperfect recollection of them (see Joined Cases T‑183/02 and T‑184/02 El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II‑965, paragraph 68 and the case-law cited).

75 Lastly, there is nothing to prevent a determination as to whether there is any 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 Case T‑359/02 Chum v OHIM — Star TV (STAR TV) [2005] ECR II‑1515, paragraph 43 and the case-law cited).

76 In paragraph 40 of the contested decision, the Board of Appeal found, in contrast to the Opposition Division, that it was likely that the public, or at least a substantial part of it, would perceive and pronounce the sign applied for as ‘nuna’.

77 The applicant disputes that assessment. It considers that the consumer will have to make a considerable effort or use his imagination to perceive the sign as including the word element ‘nuna’. It adds that the elements of the sign applied for may not be perceived as letters, but simply as curves or semi-circles.

78 In that regard, it must be pointed out that the sign applied for consists of four symbols, namely three curved forms in various positions and a circular symbol.

79 The graphic element of the sign applied for will not preclude a large part of the relevant public from perceiving a word element.

80 Before the Opposition Division, the applicant moreover submitted that the sign applied for is a graphical representation of the mark nuna and reveals a more stylistic font with letters seemingly made up of various curved lines.

81 In those circumstances, it must be held that, in spite of the stylised nature of the sign applied for, the great majority of the relevant public will perceive that sign as consisting of the word element ‘nuna’.

82 The applicant disputes the Board of Appeal’s assessment that there is a visual similarity between, on the one hand, the sign applied for and, on the other hand, the earlier signs.

83 As regards the earlier sign NANA, the difference relating to the second letter of the signs at issue, the ‘u’ instead of the ‘a’, is not capable of offsetting the visual similarity between those signs. As the Board of Appeal correctly pointed out, the sign applied for and the sign NANA have the same structure and coincide in three out of their four letters, which occupy the same position.

84 The Board of Appeal did not therefore err in finding that there was a visual similarity between the sign applied for and the earlier sign NANA.

85 As regards the earlier sign NANU-NANA, the Board of Appeal found that there was a visual similarity after pointing out, first, that the letters ‘n’, ‘u’ and ‘a’ of which that earlier sign consists were also present in the mark applied for and, secondly, that there was a similarity between, on the one hand, the elements ‘nanu’ and ‘nana’ of which the earlier sign consists and, on the other hand, the sign applied for.

86 That finding must be upheld. However, as the Board of Appeal pointed out, that degree of similarity is slightly lower on account of the difference observed in the number of letters of which the signs at issue consist and on account of the presence of a hyphen.

87 The applicant criticises the Board of Appeal for finding that there was a phonetic similarity between the signs at issue.

88 In the first place, as regards the earlier mark NANA, it is necessary to reject the applicant’s arguments relating, first, to the case-law according to which consumers generally pay more attention to the beginning of a mark than to the end and, secondly, to the fact that the sign NANA possesses a ‘repetitive … phonetic’ syllable.

89 As the Board of Appeal pointed out in the contested decision, the sign NANA and the sign applied for have two syllables, are of the same length and will be pronounced according to the same rhythm. Furthermore, the similarity between the two signs results not only from the use of the same consonant ‘n’, which occupies the same position in both signs, but also from the fact that one of the two syllables, ‘na’, is identical. It is difficult to dispute that that fact has a particular phonetic impact on account of the shortness of the words of which the signs consist and the final position of that syllable. Those similarities thus offset the difference observed at the beginning of the sign.

90 In the second place, as regards the earlier mark NANU-NANA, the applicant submits that the number of syllables is very different and that the fact that the earlier mark consists of the repetition of the same word, with the last vowel being the only difference, creates ‘a rhythm and a repetitive tone that is not heard’ when the mark applied for is pronounced.

91 In that regard, it must be borne in mind that, as regards the phonetic comparison of the signs at issue, the fact that the number of syllables is different is not sufficient to rule out a phonetic similarity between the signs (see judgment of 24 May 2011 in Case T‑161/10 Longevity Health Products v OHIM — Tecnifar (E-PLEX), paragraph 36 and the case-law cited).

92 In the present case, and as the Board of Appeal pointed out in paragraph 44 of the contested decision, there is indeed a difference in length and therefore in rhythm in the pronunciation of the sign applied for and of the sign NANU-NANA. It must, however, be borne in mind that, at the same time, there is a phonetic similarity between the sign applied for and the sign NANA and that the sign NANU-NANA includes all the syllables in the mark applied for.

93 It follows that, even though the signs at issue are of a different length and consist of a different number of words, the overall impression which they produce leads to the finding that there is a certain phonetic similarity between them owing to their common component (see, to that effect, judgment of 20 October 2011 in Case T‑214/09 COR Sitzmöbel Helmut Lübke v OHIM — El Corte Inglés (COR), not published in the ECR, paragraph 63).

94 In those circumstances, the Board of Appeal was right to find that there was a phonetic similarity between the signs at issue.

95 In paragraph 45 of the contested decision, the Board of Appeal found that the sign NANA had a meaning in French, English, Spanish and Italian. Furthermore, it stated that the sign NANU-NANA and the sign applied for had no meaning in the relevant languages. In those circumstances, it endorsed the Opposition Division’s finding that the sign applied for and the sign NANA were conceptually dissimilar in certain languages whereas that comparison, like the conceptual comparison between the sign applied for and the sign NANU-NANA, was not relevant in the other cases.

96 The applicant does not dispute that assessment which, having regard to the word elements of those signs, is in any event correct.

97 In view of all of the foregoing, the Board of Appeal did not err in finding, in the contested decision, that the sign applied for was similar overall to the earlier sign NANA and that its degree of similarity with the earlier sign NANU-NANA was slightly lower.

98 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others) [2006] ECR II‑5409, paragraph 74).

99 The applicant disputes the Board of Appeal’s finding that there is a likelihood of confusion between the mark applied for and the earlier marks with respect to all the goods covered by the mark applied for.

100 First, the applicant submits that the mark applied for has a high degree of distinctiveness and a considerable reputation on the European market for children’s goods, which precludes a likelihood of confusion between the marks at issue.

101 It must, however, be pointed out that the applicant’s argument was not put forward in the course of the proceedings before OHIM and that it is based on documents which have been produced for the first time before the Court. The Court cannot take that argument and the documents produced in support of it into consideration for the purposes of reviewing the legality of the contested decision pursuant to Article 65 of Regulation No 207/2009 or, moreover, in any exercise of its power to alter decisions, which does not authorise it to substitute its own reasoning for that of a Board of Appeal or to carry out an assessment on which that Board of Appeal has not yet adopted a position (see, to that effect, Case C‑263/09 P Edwin v OHIM [2011] ECR I‑5853, paragraphs 71 and 72).

102 Furthermore, and in any event, it is only the reputation of the earlier mark, and not that of the later mark, which must be taken into account when determining whether the similarity between the goods covered by two marks is sufficient to give rise to a likelihood of confusion (Case C‑498/07 P Aceites del Sur-Coosur v Koipe [2009] ECR I‑7371, paragraph 84, and judgment of 13 September 2011 in Case T‑522/08 Ruiz de la Prada de Sentmenat v OHIM — Quant (AGATHA RUIZ DE LA PRADA), not published in the ECR, paragraph 64).

103 Secondly, as has been established in paragraphs 82 to 97 above, the Board of Appeal did not err in finding that the sign applied for was similar overall to the earlier sign NANA and that the degree of similarity with the earlier sign NANU‑NANA was slightly lower.

104 As regards the comparison of the goods at issue, the Board of Appeal cannot be criticised for finding that the goods in Classes 18, 21 and 28 covered by the mark applied for were identical to the goods in the same classes covered by the earlier marks. Furthermore, the Board of Appeal did not err in finding, first, that the ‘diapers (textile)’ and ‘foot muffs for baby and children’ in Class 25 were identical to the ‘clothing for children’ covered by the earlier mark NANU-NANA and, secondly, that the ‘foot muffs for push-chairs and infant car seats’ were similar to the clothing covered by the same earlier mark. Lastly, it is necessary to uphold the Board of Appeal’s finding that the ‘cribs; high chairs; bouncing seats; baby rocking chairs and carry cots’ in Class 20 covered by the mark applied for were similar to the ‘furniture’ in Class 20 covered by the earlier marks.

105 Consequently, and inasmuch as the normal distinctive character of the earlier marks is not disputed by the applicant, the Board of Appeal was right to find that there is a likelihood of confusion between the marks at issue as regards the goods in Classes 18, 21, 25 and 28 and the ‘cribs; high chairs; bouncing seats; baby rocking chairs and carry cots’ in Class 20 covered by the mark applied for.

106 By contrast, it is apparent from paragraphs 50 to 72 above that the ‘strollers; buggies; safety car seats for children’ in Class 12 and the ‘baby walkers’ and ‘sleeping bags for baby and children’ in Class 20 may not be regarded as identical or similar to the goods covered by the earlier marks.

107 Consequently, since one of the cumulative conditions for the application of Article 8(1)(b) of Regulation No 207/2009 is not satisfied, the Board of Appeal erred in finding that there was a likelihood of confusion in respect of the ‘strollers; buggies; safety car seats for children’ in Class 12 and the ‘baby walkers’ and ‘sleeping bags for baby and children’ in Class 20.

108 In view of all of the foregoing, the contested decision must be annulled in so far as the Board of Appeal found that there was a likelihood of confusion as regards, first, the ‘strollers; buggies; safety car seats for children’ in Class 12 and, secondly, the ‘baby walkers’ and ‘sleeping bags for baby and children’ in Class 20.

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

110 In the present case, since the applicant has not applied for costs and OHIM has been unsuccessful, each party must be ordered to bear its own costs.

1. Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 15 February 2012 (Case R 476/2011-1), relating to opposition proceedings between Nanu-Nana Joachim Hoepp GmbH & Co. KG and Nuna International BV, as regards the ‘strollers; buggies; safety car seats for children’ in Class 12 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 the ‘baby walkers’ and ‘sleeping bags for baby and children’ in Class 20;

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Nuna International v OHMI - Nanu-Nana Joachim Hoepp (nuna) (Judgment) [2014] EUECJ T-195/12 (23 September 2014) URL: http://www.bailii.org/eu/cases/EUECJ/2014/T19512.html Cite as: [2014] EUECJ T-195/12, ECLI:EU:T:2014:804, EU:T:2014:804

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