BSH v OHMI - Arcelik (AquaPerfect) (Judgment) [2015] EUECJ T-123/14 (28 January 2015)

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(Community trade mark — Opposition proceedings — Application for Community word mark AquaPerfect — Earlier Community word mark waterPerfect — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

BSH Bosch und Siemens Hausgeräte GmbH, established in Munich (Germany), represented by S. Biagosch, lawyer,

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

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

Arçelik A.Ş., established in Istanbul (Turkey), represented by A. Franke, lawyer,

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 9 December 2013 (Case R 314/2013-4) concerning opposition proceedings between BSH Bosch und Siemens Hausgeräte GmbH and Arçelik A.Ş.,

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

having regard to the application lodged at the Registry of the Court on 17 February 2014,

having regard to the response of OHIM lodged at the Registry of the Court on 27 May 2014,

having regard to the response of the intervener lodged at the Registry of the Court on 22 May 2014,

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

1 On 11 October 2011, the intervener, Arçelik A.Ş., filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

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

3 The goods in respect of which registration was sought are within Class 7 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 inter alia to the following description: ‘Electric motors (other than those for land transportation vehicles); pressured air producers, compressors; pumps other than machine or motor parts, namely hydrophores, water pumps (electro pumps, motor pumps), pumps for heating installations; pumps as machine or motor parts (liquid and gas pumps); electric apparatus used in the kitchen for chopping, grinding, crushing, mixing and crumbling, namely mixers, blenders, kitchen robots, electric knives, meat-grinding machines, garbage disposal machines; dishwashers, washing machines and dryers, electrical or motor-operated floor polishing machines; electric vacuum cleaners and electric carpet washing machines and their bags, pipes and parts thereof’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 2011/216 of 15 November 2011.

5 On 9 February 2012, the applicant, BSH Bosch und Siemens Hausgeräte GmbH, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 against registration of the trade mark applied for in respect of the goods referred to in paragraph 3 above.

7 The goods in respect of which the earlier mark was registered fall inter alia in Class 7 and correspond, for that class, to the following description: ‘Electrical household and kitchen machines and apparatus (included in Class 7), in particular electrical kitchen machines and apparatus including grinders/crushers, mixing and kneading devices, fruit pressing machines, de-juicers, juice centrifuges, grinding machines, cutting devices, electrically powered tools, tin openers, knife sharpening devices and appliances and devices for making beverages and/or food, pumps for dispensing chilled beverages for use in combination with devices for chilling beverages; electrical waste disposers, namely waste grinders and waste compacting machines; dishwashers; electric machines and devices for cleaning laundry and clothing (included in Class 7), including washing machines, spin dryers; ironing presses, ironing machines, included in Class 7; electric household cleaning equipment, including electric window cleaning equipment, electric shoe polishers and vacuum cleaners, wet and dry vacuuming apparatus; parts for all the aforesaid goods included in Class 7, in particular flexible tubes, pipes, dust filters, dust filter bags, all for vacuum cleaners’.

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

9 On 14 December 2012, the Opposition Division upheld the opposition for the goods referred to in paragraph 3 above.

10 On 13 February 2013, the intervener filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.

11 By decision of 9 December 2013 (‘the contested decision’), the Fourth Board of Appeal of OHIM upheld the appeal, annulled the decision of the Opposition Division in so far as it had rejected the Community trade mark application for the goods referred to in paragraph 3 above, and rejected the opposition in respect of those goods. It essentially considered that, even though the goods in question were partly similar and partly identical, there was no likelihood of confusion between the signs at issue, owing to the low distinctive character of the earlier mark, the fact that the only element the signs had in common was the weakly distinctive part of the earlier mark, namely the laudatory element ‘perfect’, as well as the low degree of visual and phonetic similarity of the signs.

14 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

15 It argues that there is a likelihood of confusion between the signs at issue.

16 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.

17 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 Beverley Hills (GIORGIO BEVERLEY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

18 It is in the light of those considerations that the applicant’s arguments should be examined.

19 The Board of Appeal essentially took the view that the relevant public consists of end consumers in general in all the Member States of the European Union. In addition, it considered them to have a higher level of attention than average, in view of the nature of the goods in question, which are not daily consumer goods.

21 The Court nevertheless considers it appropriate to review the legality of the Board of Appeal’s assessment. Where it is called upon to assess the legality of a decision of the Board of Appeal of OHIM, the Court cannot be bound by an incorrect assessment of the facts by that Board, since that assessment is part of the findings the legality of which is being challenged before the Court (judgment of 18 December 2008 in Les Éditions Albert René v OHIM, C‑16/06 P, ECR, EU:C:2008:739, paragraph 48).

22 In that regard, it should be held that, in view of the nature of the goods in question and of the fact that the earlier mark is a Community trade mark, the Board of Appeal was correct in considering that those goods are directed at end consumers from all the Member States of the European Union.

23 However, since some of the goods in question, which in this case are those that can be considered household products for the kitchen and household, are, contrary to the Board of Appeal’s assessment, daily consumer goods, it must be considered that the public in question consists not only of consumers with a higher level of attention than average, as the Board of Appeal found and OHIM maintains, but also consumers with a normal level of attention.

24 The Board of Appeal upheld the finding of the Opposition Division to the effect that the goods covered by the mark applied for and those covered by the earlier mark are identical or similar.

25 The parties do not dispute that finding, which, in any event, can only be endorsed, in view of the goods in question.

26 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant components. The perception of the marks by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).

27 The Board of Appeal found that, on the visual and phonetic level, the signs at issue were similar to a low degree, and that, conceptually, they had no meaning; the comparison was therefore neutral.

28 The applicant is of the view, first, that, visually and phonetically, the similarity of the signs at issue is not limited to the presence of the term ‘perfect’ within each of those two signs, since those signs also have the same length and the same number of syllables, being identically stressed and having an almost identical sequence of vowels. It submits, secondly, that the signs at issue are conceptually identical given that the Latin term ‘aqua’, meaning water, is understood in the vast majority of the European Union and that the same is true for the terms ‘water’ and ‘perfect’, which are basic words in the English language.

29 OHIM counters, first of all, that the differences between the signs at issue, which occur in the beginning of the signs, confer on the overall visual impressions of the signs a low degree of similarity. Next, phonetically, it maintains that, given that the first part of the sign generally possesses greater weight, the degree of similarity is similarly low. Moreover, it claims that the signs at issue have a weak — or even very weak — degree of conceptual similarity for the relevant public, in particular the English and Italian-speaking public, who grasp some meaning in those signs. Lastly, OHIM emphasises that the earlier mark has a lower than average distinctive character, given that, in the light of the nature of the goods covered by that mark, it makes reference to some characteristics of those goods, and that the element common to the signs also has a low distinctive character.

30 The intervener contends, first of all, that the Board of Appeal was correct to take the view that the signs at issue were of low similarity, visually and phonetically, and that they were conceptually different. In addition, the earlier mark has a weak distinctive character. Lastly, the element ‘perfect’, which is the only element in which the signs coincide visually and phonetically, is a laudatory element and therefore has a weak distinctive character.

31 In the present case, it should be recalled that the signs at issue are the sign AquaPerfect, in respect of the mark applied for, and the sign waterPerfect, in respect of the earlier mark.

32 First, at the visual level, it must be recognised, as did the Board of Appeal, that the signs at issue differ in the elements ‘aqua’ and ‘water’, which are positioned at the beginning of those signs. Admittedly, as OHIM and the intervener note, it has already been held that the consumer generally pays greater attention to the beginning of a mark than to the end (see judgment of 25 March 2009 in L’Oréal v OHIM — Spa Monopole (SPA Therapy), T‑109/07, ECR, EU:T:2009:81, paragraph 30 and the case-law cited). However, in the present case, it must be noted that those signs contain 11 and 12 letters, respectively, and so are similar in length. Next, they have a common element ‘perfect’, which contains eight letters and is therefore longer than the elements ‘aqua’ and ‘water’ by which they differ. Lastly, contrary to what OHIM and the intervener essentially argue, those elements ‘aqua’ and ‘water’ are, despite their difference, equivalent in terms of length (see, to that effect, judgment of 28 November 2013 in Vitaminaqua v OHIM — Energy Brands (vitaminaqua), T‑410/12, EU:T:2013:615, paragraph 54). It must therefore be considered that, based on an overall impression, the similar elements between the signs referred to prevail globally over the dissimilar elements. In those circumstances, it must be considered that, visually, the signs at issue are similar, not to a low degree, as the Board of Appeal held, but to an average degree.

33 Secondly, at the phonetic level, it must be recognised, as did the Board of Appeal, that the signs at issue differ in their first two syllables. It should nevertheless be pointed out, first of all, that those signs have the same number of syllables, four in this case. Next, they share their last two syllables, contained in their common element ‘perfect’. Lastly, contrary to what OHIM and the intervener essentially argue, the dissimilar elements between those signs, namely their first two syllables, are, despite their difference, highly comparable, both in terms of their length, namely two syllables, and in terms of their sound, the vowel ‘a’ being followed in both cases by an occlusive unvoiced consonant, ‘t’ and ‘q’, respectively (see, to that effect, judgment in vitaminaqua, cited in paragraph 32 above, EU:T:2013:615, paragraph 55). Moreover, even though, as OHIM and the intervener state in general terms, the first part of a sign has greater weight, and although, in this case, the dissimilar elements are positioned at the beginning of the signs at issue, the similar elements between those signs prevail globally, based on an overall impression, over the dissimilar elements. Consequently, the signs at issue must be considered phonetically similar, not to a low degree, as the Board of Appeal held, but to an average degree.

34 Thirdly, at the conceptual level, it should be emphasised, in relation, first of all, to the element ‘aqua’ of the mark applied for, that it consists of a common Latin term, meaning ‘water’, which the European Union consumer may be assumed to know (see, to that effect, judgment in vitaminaqua, cited in paragraph 32 above, EU:T:2013:615, paragraph 57). Furthermore, the meaning of the word ‘aqua’ will be understood by Portuguese, Spanish and Italian consumers by reason of its close proximity to its equivalents in their respective languages, namely the words ‘água’, ‘agua’ and ‘acqua’. Lastly, it will also be understood by the French consumer, given that the term ‘aqua’ is a common prefix in the French language having been borrowed from Latin (judgment in vitaminaqua, cited in paragraph 32 above, EU:T:2013:615, paragraph 69).

35 Next, as regards the element ‘water’ of the earlier mark, that element can be regarded as being part of the basic vocabulary of the English language and will therefore be understood by a large part of the general public, even non-English-speaking, who have a sufficient knowledge of English (judgment in vitaminaqua, cited in paragraph 32 above, EU:T:2013:615, paragraph 58). It has, moreover, already been held that the average French consumer will be able to understand that that element means ‘water’, even though the terms deviate from the word used in French (judgment in vitaminaqua, cited in paragraph 32 above, EU:T:2013:615, paragraph 69).

36 With regard, lastly, to the element ‘perfect’ of the signs at issue, that element is a common word in the English language which means ‘free of fault’ (judgment of 24 April 2012 in Leifheit v OHIM (EcoPerfect), T‑328/11, EU:T:2012:197, paragraph 25) and which may be considered as thus being understood by a large part of the relevant public, including non-English-speaking. Indeed, the Board of Appeal found, correctly, that it was highly likely that European Union consumers would understand that element as a basic English word, resembling the same word in other languages and that that element was a laudatory adjective that fully expressed the full attainment of all the characteristics or qualities of a product, so the public would understand it as a synonym for ‘great quality’.

37 In those circumstances, a large part of the relevant public will be able to identify, in the signs at issue, the concepts of water and quality.

38 Consequently, for that part of the relevant public, the signs at issue have the same semantic content. Even though, as is essentially stated by OHIM and the intervener, in their entirety those signs have no specific meaning, the fact remains that, considered as a whole, those signs will be perceived, as the Board of Appeal found and as OHIM essentially acknowledges, in respect of a part of the relevant public, as alluding to the idea that the goods in question are made in order to obtain excellent water, or are high quality waterproof products or are excellent products which use water.

39 In that regard, in relation to OHIM’s argument that account should be taken of the fact that the element ‘water’ of the earlier mark is a term in the English language whereas the element ‘aqua’ of the mark applied for is a term in Latin, such that the signs at issue differ in terms of the language enabling access to their conceptual meaning, it must be recalled that, according to settled case-law, a linguistic difference between signs is not automatically sufficient to exclude the existence of conceptual similarity from the point of view of the relevant consumers. In so far as such a difference requires the consumer to make a translation, it is nevertheless capable – depending, inter alia, on the linguistic knowledge of the relevant public, the degree of relationship between the languages concerned and the actual words used by the signs at issue – of preventing the relevant public, at least to some degree, from making an immediate conceptual comparison (see, to that effect, judgments of 28 June 2011 in Oetker Nahrungsmittel v OHIM — Bonfait (Buonfatti), T‑471/09, EU:T:2011:307, paragraph 82, and 26 September 2012 in Serrano Aranda v OHIM — Burg Groep (LE LANCIER), T‑265/09, EU:T:2012:472, paragraph 66). However, in the present case, as has not only already been stated, but also established by case-law (judgment in vitaminaqua, cited in paragraph 32 above, EU:T:2013:615, paragraph 57), the term ‘aqua’ is a common Latin term, meaning water, the meaning of which may be assumed to be known by the consumer of the European Union. Moreover, it is only one of the two elements comprising the mark applied for, the other element being a term from the English language. Lastly, as the foregoing findings indicate, all the elements of the signs at issue will be understood by a large part of the general public, even non-English-speaking. It follows that the circumstance raised by OHIM is not capable of calling into question the existence of a conceptual similarity between the signs at issue for a large part of the relevant public. For the same reasons, the intervener’s claim that the combination of the Latin term ‘aqua’ with the English term ‘perfect’ is fanciful because it is grammatically unusual must be rejected.

40 Consequently, contrary to what the Board of Appeal held, the signs at issue do have some conceptual similarity.

41 It follows from all the foregoing that, based on an overall impression, the signs at issue are similar to an average degree.

42 That finding is not affected by OHIM’s argument — or by the intervener’s essentially similar one — that the element ‘perfect’, which is the only common element between the two signs at issue, is devoid of distinctive character or has, at most, a weak distinctive character, owing to the fact that it will be perceived as being laudatory, that element, moreover, being positioned at the end of the signs. That argument does not affect the comparison of those signs in this case. Thus, while that element may indeed be considered to have a weak distinctive character, owing to the laudatory character it will be attributed by the relevant public, the fact remains that none of the other elements making up the same signs can be considered to have a greater distinctive character or be dominant. The elements ‘aqua’ and ‘water’ also have a weak distinctive character owing to the fact that they will be perceived by the relevant public as meaning ‘water’ and that, as OHIM submits, the goods covered all involve, in one way or another, water. Accordingly, the fact that the element ‘perfect’ of the signs in question has a weak distinctive character, and that it is positioned at the end of the signs while their dissimilar elements are at the beginning, has no consequence on the overall impression of the signs at issue.

43 Lastly, as regards the argument of OHIM and the intervener concerning the weak distinctive character of the earlier mark, it must be stated that that is not directly relevant in the comparison of the signs at issue and that it will, if necessary, be taken into account in the global assessment of the likelihood of confusion.

44 The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the marks and the similarity of the goods or services concerned. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74).

45 The Board of Appeal took the view that the earlier mark had been registered for goods all of which concerned water and contained a laudatory element, namely the element ‘perfect’, and a descriptive element, namely the element ‘water’, such that its distinctive character was weak. It concluded that, even though the goods in question were partly similar and partly identical, there was no likelihood of confusion between the signs at issue, owing to factors such as the weak distinctive character of the earlier mark, the fact that those signs had only the weakly distinctive part of the earlier mark in common, as well as the low degree of visual and phonetic similarity of those signs.

46 The applicant objects that the earlier mark does not describe any of the goods it covers and that the fact that those goods all relate to water is not sufficient to conclude that that mark has a weak distinctive character. In any event, even if such were the case, in the light of the identity and the similarity of the goods in question, the visual and phonetic similarity of the signs at issue, their conceptual identity as well as the fact that the earlier mark has an average distinctive character, the applicant is of the view that there is a likelihood of confusion between those signs.

47 OHIM, supported in essence by the intervener, is of the view that the low degree of similarity between the signs at issue, the weak distinctive character of the earlier mark, the absence of distinctive character of the only element common to those signs as well as the high level of attention of the consumers in question rules out the existence of a likelihood of confusion.

48 The intervener is of the view that, in the light of the weak distinctive character of the earlier mark, the low degree of visual and phonetic similarity between the signs at issue as well as the fact that those signs coincide only in the element ‘perfect’, which has a weak distinctive character, the Board of Appeal’s conclusion that there is no likelihood of confusion is well founded.

49 In the present case, in the light of the identity or the similarity of the goods covered by the signs at issue, their average similarity, particularly at the visual and phonetic level, and the normal level of attention of a part of the relevant public, it must be held that the Board of Appeal was incorrect to find that there was no likelihood of confusion between the mark applied for and the earlier mark.

50 That conclusion is not called into question by the finding of the Board of Appeal, on which OHIM and the intervener are in agreement, that the earlier mark has a weak distinctive character. Without it even being necessary to rule on the validity of that finding, such a finding would not prevent a likelihood of confusion being found in the present case. Therefore, although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that 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 judgment of 13 December 2007 in Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, ECR, EU:T:2007:387, paragraph 70 and the case-law cited). In the present case, notwithstanding the assessment of the distinctive character of the earlier mark, the existence of a likelihood of confusion may be established in the light of the similarity of the signs at issue and the identity or similarity of the goods in question, account being taken of the level of attention of a part of the relevant public.

51 It follows from all the foregoing that the single plea in law must be upheld and the contested decision annulled.

52 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.

53 In the present case, OHIM and the intervener have been unsuccessful. Consequently, first, OHIM must be ordered to bear its own costs and also to pay the costs of the applicant, in accordance with the form of order sought by the latter. Secondly, the intervener has been unsuccessful and must bear its own costs.

1. Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 9 December 2013 (Case R 314/2013-4) concerning opposition proceedings between BSH Bosch und Siemens Hausgeräte GmbH and Arçelik A.Ş.;

2. Orders OHIM to bear its own costs and to pay those incurred by BSH Bosch und Siemens Hausgeräte;

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> BSH v OHMI - Arcelik (AquaPerfect) (Judgment) [2015] EUECJ T-123/14 (28 January 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T12314.html Cite as: [2015] EUECJ T-123/14, EU:T:2015:52, ECLI:EU:T:2015:52

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