Calida v OHMI - Quanzhou Green Garments (dadida) (Judgment) [2015] EUECJ T-597/13 (23 October 2015)

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(Community trade mark — International registration designating the European Community — Figurative mark dadida — Earlier Community word mark CALIDA — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation No 207/2009)

Calida Holding AG, established in Sursee (Switzerland), represented by R. Kaase and H. Dirksmeier, lawyers,

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

ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 16 September 2013 (Case R 1190/2012-4), relating to cancellation proceedings between Calida Holding AG and Quanzhou Green Garments Co. Ltd,

composed of M.E. Martins Ribeiro (Rapporteur), President, S. Gervasoni and L. Madise, Judges,

having regard to the application lodged at the Court Registry on 18 November 2013,

having regard to the rejoinder lodged at the Court Registry on 23 September 2014,

1 On 13 August 2008, Quanzhou Green Garments Co. Ltd was granted protection in the European Union for international registration No 979903 for the following figurative mark:

2 The goods in respect of which the international registration was acquired are in Class 25 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: ‘Clothing and children’s clothing, namely coats, trousers, shirts; layetttes; bathing suits; shoes; caps; socks; gloves; scarfs; football shoes’.

3 On 14 July 2011, the applicant, Calida Holding AG, filed an application for a declaration of invalidity in respect of all of the goods protected by the contested mark, pursuant to Article 53(1)(a) and Article 8(1)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

4 That application was based on the existence of a likelihood of confusion between the contested mark and the earlier Community word mark CALIDA, which had been filed on 1 April 1996, registered on 9 December 1998 and renewed until 1 April 2016 for the following goods in Classes 24 and 25 of the Nice Classification:

5 By decision of 30 April 2012, the Cancellation Division rejected the application for a declaration of invalidity, on the ground that there was no likelihood of confusion on the part of the target public.

6 On 27 June 2012, the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Cancellation Division.

7 By decision of 16 September 2013 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal. First, the Board of Appeal considered, in paragraph 11 of the contested decision, that the relevant territory was composed of the Member States of the European Union and that the target consumer was the average consumer of the goods concerned, who is deemed to be reasonably well informed, reasonably attentive and circumspect, and with a normal level of attention. Next, in paragraph 12 of the contested decision, the Board of Appeal endorsed the decision of the Cancellation Division, in so far as it had found that the goods concerned by the marks at issue were partly identical and partly similar. The Board of Appeal then went on to take the view, in paragraphs 17 to 19 of the contested decision, that the marks at issue were visually dissimilar and aurally similar to an average degree. The Board of Appeal added that the conceptual comparison between those marks remained neutral, including for the Spanish-speaking public, who attribute the meaning ‘hot, warm’ to the word ‘cálida’. Furthermore, in paragraphs 20 to 24 of the contested decision, the Board of Appeal found, on the basis of the evidence submitted by the applicant, that the earlier word mark lacked an enhanced degree of distinctiveness and therefore had a normal degree of distinctiveness, except for the Spanish-speaking public, for whom the distinctiveness of the mark was reduced. Finally, the Board of Appeal concluded, in paragraphs 25 to 28 of the contested decision, that there was no likelihood of confusion between the marks at issue, attaching particular importance to the lack of visual similarity between those marks.

10 In the context of its action, the applicant raises a single plea alleging infringement of Article 8(1)(b) of that regulation, in which three claims are directed against the contested decision so far as concerns the Board of Appeal’s assessment (i) of the visual similarity of the marks at issue, (ii) of the enhanced distinctive character of the earlier word mark and (iii) of the likelihood of confusion.

‘1. A Community trade mark shall be declared invalid on application to the Office or on the basis of a counterclaim in infringement proceedings:

a) where there is an earlier trade mark as referred to in Article 8(2) and the conditions set out in paragraph 1 or paragraph 5 of that Article are fulfilled;

12 Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for cannot 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. Furthermore, under Article 8(2)(a)(i) of Regulation No 207/2009, ‘earlier trade marks’ means Community trade marks with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

13 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 (judgments of 10 September 2008 in Boston Scientific v OHIM — Terumo (CAPIO), T‑325/06, EU:T:2008:338, paragraph 70, and of 31 January 2012 in Cervecería Modelo v OHIM — Plataforma Continental (LA VICTORIA DE MEXICO), T‑205/10, EU:T:2012:36, paragraph 23; see also, by analogy, judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 29, and of 8 May 2014 in Bimbo v OHIM, C‑591/12 P, ECR, EU:C:2014:305, paragraph 19).

14 Furthermore, the existence of a likelihood of confusion on the part of the public must be assessed globally, account being taken of all factors relevant to the circumstances of the case (judgment in CAPIO, cited in paragraph 13 above, EU:T:2008:338, paragraph 71; see also, by analogy, judgments of 11 November 1997 in SABEL, C‑251/95, ECR, EU:C:1997:528, paragraph 22, and Bimbo v OHIM, cited in paragraph 13 above, EU:C:2014:305, paragraph 20).

15 That global assessment implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 13 September 2007 in Il Ponte Finanziaria v OHIM, C‑234/06 P, ECR, EU:C:2007:514, paragraph 48, and of 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 25; see also, by analogy, judgment in Canon, cited in paragraph 13 above, EU:C:1998:442, paragraph 17). The interdependence of those factors is referred to in recital 8 in the preamble to Regulation No 207/2009, which states that the concept of similarity should be interpreted in relation to the likelihood of confusion, the appreciation of which depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified (see judgment of 18 September 2012 in Scandic Distilleries v OHIM — Bürgerbräu, Röhm & Söhne (BÜRGER), T‑460/11, EU:T:2012:432, paragraph 26 and the case-law cited).

16 Furthermore, the global assessment of the visual, phonetic or conceptual similarity of the signs at issue must be based on the overall impression given by the signs, account being taken in particular of their distinctive and dominant components. The wording of Article 8(1)(b) of Regulation No 207/2009 (‘there exists a likelihood of confusion on the part of the public’) shows that the perception of the marks by the average consumer of the type of goods or services in question plays a decisive role in the global assessment of the likelihood of confusion. The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgment in BÜRGER, cited in paragraph 15 above, EU:T:2012:432, paragraph 27; see also, by analogy, judgment SABEL, cited in paragraph 14 above, EU:C:1997:528, paragraph 23, and Bimbo v OHIM, cited in paragraph 13 above, EU:C:2014:305, paragraph 21).

17 For the purposes of the global assessment of the likelihood of confusion, the average consumer of the goods in question is deemed to be reasonably well informed and reasonably observant and circumspect. Furthermore, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the various marks but must rely on his imperfect recollection of them. 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 concerned (see judgment in BÜRGER, cited in paragraph 15 above, EU:T:2012:432, paragraph 28 and the case-law cited; see also, by analogy, judgment of 22 June 1999 in Lloyd Schuhfabrik Meyer, C‑342/97, ECR, EU:C:1999:323, paragraph 26).

18 The Board of Appeal’s assessment of the likelihood of confusion between the marks at issue must be examined in the light of the foregoing considerations.

19 In the present case, since the earlier word mark on which the application for cancellation of the contested mark is based is a Community trade mark, the examination must be carried out — as the Board of Appeal did in paragraph 11 of the contested decision and is, moreover, not disputed by the applicant — with regard to the territory of the whole of the European Union.

20 It is also appropriate to confirm the Board of Appeal’s findings in paragraphs 11 and 12 of the contested decision, which have not been challenged by the applicant, according to which the goods at issue, which are partly identical and partly similar, are intended for the general public, which is deemed to be reasonably well informed and reasonably observant and circumspect and whose level of attentiveness is normal.

21 As regards the comparison of the marks at issue, it should be noted that the applicant has not disputed, in the context of the present action, the findings of the Board of Appeal that the degree of phonetic similarity between those marks was average and that the conceptual similarity was neutral.

22 The Board of Appeal’s findings in paragraphs 18 and 19 of the contested decision must therefore be confirmed.

23 The applicant disputes the contested decision, inasmuch as the Board of Appeal considered that there was no visual similarity between the marks at issue, and claims, to the contrary, that they are similar to at least an average degree.

24 In that regard, it should be noted at the outset that, following settled case-law, the overall visual impression given by two marks which share a common element may be different, in particular where the comparison concerns a word mark, on the one hand, and a mark composed of word and figurative elements, on the other (see, to that effect, judgment of 8 December 2011 in Aktieselskabet af 21. november 2001 v OHIM — Parfums Givenchy (only givenchy), T‑586/10, EU:T:2011:722, paragraph 33 and the case-law cited).

25 The word elements which make up the marks at issue are not identical and are, in themselves, visually different, notwithstanding the existence of a phonetic similarity between them.

26 The consonants ‘c’ and ‘l’, which are only present in the earlier word mark, enable a different overall impression to be created compared with the corresponding consonant ‘d’ in the contested mark. Moreover, as the marks at issue consist of a limited number of letters, the differences between them will be more easily grasped by the average consumer (see, to that effect, judgment of 12 February 2014 in dm-drogerie markt v OHIM — Semtee (CALDEA), T‑26/13, EU:T:2014:70, paragraph 34).

27 That different overall impression is strongly reinforced by the presence of a figurative element which has such a very important place in the contested mark as to be, as was correctly stated the Board of Appeal in paragraph 17 of the contested decision, co-dominant with the word element ‘dadida’. Although the bear holding a trumpet to its mouth can be linked to the world of children, it is however not negligible in the overall impression, inasmuch as that figurative element is in no way descriptive of the goods for which the mark has been registered, including children’s clothing. In fact, as correctly pointed out by OHIM, although the image of a bear could be considered to be descriptive of children’s toys, it does not, however, describe a characteristic of the goods in Class 25.

28 It follows that the figurative element represented by a bear blowing into a trumpet held to its mouth is not descriptive and, on the contrary, precisely because of that representation, its position in the contested mark and its importance, is co-dominant with the word element ‘dadida’.

29 Furthermore, the presence of Chinese calligraphy characters between the figurative element and the word element, in the strict sense, of the contested mark completes the different overall impression between the marks at issue.

30 Finally, it is important to note that, according to settled case-law, when considering the likelihood of confusion, 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 in question 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 judgments 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, and of 12 November 208 in Shaker v OHIM — Limiñana y Botella (Limoncello della Costiera Amalfitana shaker), T‑7/04, ECR, EU:T:2008:481, paragraph 40 and the case-law cited).

31 It follows from the fact that the contested mark is composed of a figurative element representing a bear holding a trumpet to its mouth, of Chinese calligraphy characters and of the word element ‘dadida’ that that mark is different from the earlier word mark CALIDA. Therefore, the Board of Appeal did not err in law when it, first, took into consideration all of the elements, figurative and verbal, which make up the contested mark and, second, considered that the figurative element represented by a bear holding a trumpet to its mouth was co-dominant with the word element ‘dadida’ of that mark.

32 The applicant claims, however, that the Court has, in the context of disputes involving other marks in other proceedings before it, come to a different conclusion.

33 In that regard, it should be noted that, apart from the requirement for a separate and independent examination of each case submitted to the Court, the applicant’s arguments based on the Court’s judgments which allegedly held, in similar circumstances, that there was a visual similarity between the signs examined, are not, in any event, such as to alter the finding that the marks at issue in the present case are visually different.

34 As regards, in the first place, the judgments of 7 February 2013 in AMC-Representações Têxteis v OHIM — MIP Metro (METRO KIDS COMPANY) (T‑50/12, EU:T:2013:68), and of 16 January 2014 in Message Management v OHIM — Absacker (ABSACKER of Germany) (T‑304/12, EU:T:2014:5), which the applicant relies on in claiming that the Court found that, notwithstanding the presence in each of the signs concerned of a figurative element, there was a visual similarity between those signs, suffice it to note that, unlike the present case, the word element was fully incorporated in the marks for which registration had been sought with either no additions (judgment in ABSACKER of Germany, cited above, EU:T:2014:5), or without the addition of other word elements (judgment in METRO KIDS COMPANY, cited above, EU:T:2013:68).

35 Accordingly, in the case which gave rise to the judgment in ABSACKER of Germany, cited in paragraph 34 above (EU:T:2014:5), contrary to what the applicant claims, there was not merely a similarity between the word elements of the signs at issue, but total identity, since the sole word sign present in those signs was the common word element ‘absacker’.

36 Moreover, in the judgment in METRO KIDS COMPANY, cited in paragraph 34 above (EU:T:2013:68), the word mark ‘metro’, identical in the signs at issue, was the sole word element present in the earlier mark and the first word element of the mark ‘metro kids company’ for which registration was sought.

37 As regards, in the second place, the judgments of 19 April 2013 in Hultafors Group v OHIM — Società Italiana Calzature (Snickers) (T‑537/11, EU:T:2013:207), and of 23 April 2013 in Apollo Tyres v OHIM — Endurance Technologies (ENDURACE) (T‑109/11, EU:T:2013:211), the Court found the existence of visual similarity, in the first judgment, on the ground that the figurative element was of a banal form and that the word element of the signs at issue, namely respectively ‘kickers’ and ‘snickers’, had several common characteristics and, in the second judgment, on the ground that there was a great similarity between the words ‘endurance’ and ‘endurace’, ‘regardless of the device occupying the greater part of [the endurance sign]’ which ‘[was] not particularly striking in the absence of a sufficiently clear meaning or evocation which would lead the relevant consumers to remember it alone’.

38 It follows from all the foregoing that the Board of Appeal did not err in law when it found that the marks at issue were visually different.

39 The applicant claims that the Board of Appeal erred by finding that the evidence which the applicant had submitted to it was insufficient to establish the enhanced distinctive character of the earlier word mark.

40 In that regard, it should be borne in mind that the existence of an unusually high level of distinctiveness as a result of the public’s recognition of a mark on the market necessarily presupposes that at least a significant part of the relevant public is familiar with it, but not that it necessarily has to have a reputation within the meaning of Article 8(5) of Regulation No 207/2009. It is not possible to establish in general terms, for example by referring to given percentages relating to the degree of recognition attained by the mark within the relevant section of the public, that a mark has a highly distinctive character because of the public’s recognition of it (see, to that effect and by analogy, judgments of 4 May 1999 in Windsurfing Chiemsee, C‑108/97 and C‑109/97, ECR, EU:C:1999:230, paragraph 52, and Lloyd Schuhfabrik Meyer, cited in paragraph 17 above, EU:C:1999:323, paragraph 24). Nevertheless it must be acknowledged that there is a certain interdependence between the public’s recognition of a mark and its distinctive character in that the more the mark is recognised by the target public, the more the distinctive character of that mark is strengthened (judgments of 12 July 2006 in Vitakraft-Werke Wührmann v OHIM — Johnson’s Veterinary Products (VITACOAT), T‑277/04, ECR, EU:T:2006:202, cited in paragraph 34, and of 16 November 2011 in Dorma v OHIM — Puertas Doorsa (doorsa FÁBRICA DE PUERTAS AUTOMÁTICAS) (T‑500/10, EU:T:2011:679), paragraph 45).

41 In order to assess whether a mark has a highly distinctive character as a result of the public’s recognition of it, all the relevant facts of the case must be taken into consideration, in particular the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (judgments of 14 September 1999 in General Motors, C‑375/97, ECR, EU:C:1999:408, paragraphs 26 and 27; VITACOAT, cited in paragraph 40 above, EU:T:2006:202, paragraph 35; and doorsa FÁBRICA DE PUERTAS AUTOMÁTICAS, cited in paragraph 40 above, EU:T:2011:679, paragraph 46).

42 As regards, in the first place, the fact that, by two previous decisions of the Second Board of Appeal (decisions R 678/2006-2 and R 324/2005-2), the enhanced distinctive character of the earlier word mark was allegedly found, it should be borne in mind that, according to settled case-law, the decisions which the Boards of Appeal of OHIM are called on to take under Regulation No 207/2009, concerning registration of a sign as a Community trade mark, are adopted in the exercise of circumscribed powers and are not a matter of discretion. Therefore, the legality of those decisions must be assessed solely on the basis of that regulation and not on the basis of a previous decision-making practice (see judgment of 12 January 2006 in Deutsche SiSi-Werke v OHIM, C‑173/04 P, ECR, EU:C:2006:20, paragraph 48 and the case-law cited; judgment in CALDEA, cited in paragraph 26 above, EU:T:2014:70, paragraph 35).

43 It follows from the above that the recognition by the Board of Appeal of any enhanced distinctive character of an earlier word mark cannot depend on the recognition of that distinctiveness in the context of separate proceedings concerning the parties and different legal and factual elements.

44 This situation is fundamentally different from that in which the Court recognised that the applicant had been aware of the evidence concerning the reputation of an earlier mark, even if the evidence had been submitted in other proceedings taking place between the same parties (judgment of 22 January 2015 in Tsujimoto v OHIM — Kenzo (KENZO) (T‑322/13, EU:T:2015:47, paragraph 18).

45 It is therefore for any party relying on the enhanced distinctive character of its earlier mark to establish, in the circumscribed context of each set of proceedings to which it is a party and on the basis of facts which it considers most appropriate, that that mark has acquired such a distinctive character; it cannot merely claim to adduce that evidence by virtue of the recognition of such a distinctive character, including for the same mark, in a separate administrative procedure.

46 If it were sufficient for the applicant to rely on a previous decision of the Board of Appeal to demonstrate the enhanced distinctive character of its earlier word mark, that, first, would infringe the intervener’s rights of the defence, to the extent that it could not examine, assess and challenge the facts on which the Board of Appeal relied, and, second, would extend, in error, the principle of res judicata to an administrative decision which concerned parties other than the parties to the proceedings, thereby impeding the review of the legality of an administrative decision by a judicial authority, which would be clearly contrary to the principle of legality.

47 It was therefore for the applicant to submit for assessment by the Board of Appeal in the present case the facts on the basis of which the earlier word mark had, in separate proceedings, been recognised as having an enhanced distinctive character, facts which the Board of Appeal, moreover, might have assessed differently and which the intervener would have been able to challenge. The Court would then, in a possible appeal, have examined those facts in order to determine whether the Board of Appeal had wrongly or rightly either recognised the enhanced distinctive character of the earlier word mark, or refused such recognition.

48 In the present case, in the absence of those facts, the Court cannot recognise the enhanced distinctive character of the earlier word mark by relying irrefutably — which the position taken by the applicant tends to suggest — on the Second Board of Appeal’s recognition of it in other decisions and not on the facts in support of that claim.

49 It follows that the Board of Appeal did not err in law when it held, in paragraph 24 of the contested decision, that decisions R 678/2006-2 and R 324/2005-2 were not capable of establishing the existence of an enhanced distinctive character.

50 As regards, in the second place, the other evidence provided by the applicant for the purposes of proving the enhanced distinctive character of the earlier word mark, that evidence, as set out in point 3 of the contested decision, is as follows:

– ‘Extracts from the website www.calida.com providing information about the [applicant’s] company history and its products;

– “Fact sheet CALIDA”, containing information about the [applicant’s] company;

– Press and media releases issued by the [applicant] and dated from the years 2008, 2009, 2010 and 2011.’

51 It should be noted that the Cancellation Division, for reasons of procedural economy, had assumed that the earlier mark in fact had an enhanced distinctive character and had concluded, notwithstanding that distinctive character, that there was no likelihood of confusion.

52 The Board of Appeal, however, reviewed the evidence and found, in paragraph 21 of the contested decision, that the evidence set out, in paragraph 22 of that decision, namely ‘[t]he printouts from the [applicant’s] website about the company’s history, the press and media releases, and the financial report’, were insufficient to support its claim that that mark had an enhanced distinctive character.

53 It is clear that, as the Cancellation Division observed, even if the earlier mark has an enhanced distinctive character, there would not — in the light of the lack of visual similarity between the signs at issue, of their average phonetic similarity and of their neutral conceptual similarity, and for the reasons stated in paragraphs 68 to 76 below — be any likelihood of confusion between the marks at issue.

54 In any event, the Board of Appeal’s analysis of the lack of an enhanced distinctive character of the earlier mark must be upheld for the following reasons.

55 The Board of Appeal found, in paragraph 21 of the contested decision, that ‘[t]here is no evidence from independent sources as regards the market share held in any Member State of the European Union, the turnover and, the marketing expenditures in the relevant territory and the perception of the mark by the relevant public’.

56 It is true that none of the documents come from an independent source and that, as regards documents in the case-file which come from the company itself, the Court has already held that, in order to assess the evidential value of such a document, regard should be had first of all to the credibility of the account it contains. The Court added that it is then necessary to take account of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, on its face, the documents appears sound and reliable (see judgments of 7 June 2005 in Lidl Stiftung v OHIM — REWE-Zentral (Salvita), T‑303/03, ECR, EU:T:2005:200, paragraph 42, and doorsa FÁBRICA DE PUERTAS AUTOMÁTICAS, cited in paragraph 40 above, EU:T:2011:679, paragraph 49).

57 First, according to the applicant, the Board of Appeal was wrong to find that those documents were internal documents, since they had been communicated to the public.

58 In that regard, it is sufficient to note that that claim has no factual basis to the extent that the Board of Appeal challenged the relevance of those documents not on the ground that they had not been disclosed to third parties, but on the ground that they did not come from independent sources, which the applicant has not disputed (see paragraph 21 of the contested decision).

59 However, the Board of Appeal in no way refused to take those documents into consideration, but took the view that they were insufficient for the purposes of demonstrating the enhanced distinctive character of the earlier mark.

60 It is therefore necessary to examine whether those documents can show that mark’s enhanced distinctive character acquired in the European Union.

61 In the first place, it should be noted at the outset that nothing in the documents submitted by the applicant in the context of the administrative procedure shows that it supplied evidence of the market share held by the earlier word mark, how intensive, geographically widespread and long-standing use of the mark had been, the amount invested by the undertaking in promoting it, and the proportion of the relevant section of the public which, because of the earlier word mark, identifies the goods as originating from the undertaking concerned, or that it supplied statements from chambers of commerce and industry or other trade and professional associations, for the purposes of the case-law cited in paragraph 41 above (see, to that effect, judgment in doorsa FÁBRICA DE PUERTAS AUTOMÁTICAS, cited in paragraph 40 above, EU:T:2011:679, paragraph 54).

62 The applicant has not shown, and moreover has not even claimed, that those documents contained information of that kind which was not taken into account by the Board of Appeal but which should have been.

63 Second, the applicant relies on the 2010 Annual Report in order to demonstrate, in its view, the enhanced distinctive character of the earlier mark acquired through use, according to which, in particular:

‘The Calida Brand has shown continu[ous] positive growth since its lowest sales level in 2004 and achieved sales of around CHF 150 [m]illion in the year 2010 under review, as in the previous year. With an export share in the [Eurozone] of around 50 percent, the adverse effect of the strong Swiss [franc] is noticeable. In the terms of income, the brand has developed positively year after year thanks to continu[ous] work on product development, production and procurement and this year also exceeded the long-term income goals.’

64 At the hearing, the applicant, questioned to that effect by the Court, recognised that that information, which comes from the 2010 Annual Report included in the documents during the administrative procedure, was the sole relevant information on which it relied in support of its argument that the evidence of enhanced distinctive character acquired through use had been adduced, of which the Court took note.

65 It is clear that, although it appears from the 2010 Annual Report that the sales figures of the earlier word mark amount to the sum of 150 million Swiss francs (CHF) with an export share of approximately 50% to the Euro area, the fact that those figures do not refer, in particular, to the Member States in which the share of turnover had been derived, or concern the specific goods concerned, or even reflect the perception of the earlier word mark by the relevant public, is insufficient, in light of the case-law cited in paragraph 41 above, to demonstrate that the earlier word mark had acquired an enhanced distinctive character.

66 Therefore, as the Board of Appeal correctly noted in paragraph 23 of the contested decision, the total sales expressed in CHF do not enable the intensity and geographic scope of the use of the earlier word mark in the EU to be determined. It is also correct that, in the absence of additional evidence such as invoices or purchase orders likely to establish in which Member States the earlier word mark has been marketed and the nature of the goods covered by that mark, the documents submitted by the applicant in the administrative procedure does not in any way prove the existence of an enhanced distinctive character.

67 From that point of view, the fact that the intervener has not, as the applicant claims, disputed the documents which it had provided is irrelevant for the purpose of the examination and review by both the Board of Appeal and the Court of factual material highlighting the acquisition of an enhanced distinctive character of the earlier word mark.

68 The applicant disputes the contested decision, inasmuch as the Board of Appeal concluded that there was no likelihood of confusion between the contested mark and the earlier word mark.

69 As has been pointed out in paragraph 15 of the present judgment, the global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa.

70 It should be noted that, in the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight. It is necessary to examine the objective conditions under which the marks may be present on the market. The extent of the elements of similarity or difference in the signs may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods or services covered by the signs at issue are marketed. If the goods covered by the marks at issue are usually sold in self-service stores where consumers choose the goods themselves and must therefore rely primarily on the image of the trade mark applied to the goods, the visual similarity between the signs will as a general rule be more important. If, on the other hand, the goods covered are primarily sold orally, greater weight will usually be attributed to any phonetic similarity between the signs (judgment of 6 October 2004 in New Look v OHIM — Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection), T‑117/03 to T‑119/03 and T‑171/03, ECR, EU:T:2004:293, paragraph 49).

71 Moreover, it should be borne in mind that, generally, in clothes shops, customers can themselves choose the clothes they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the goods and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, the visual perception of the marks at issue will generally take place prior to purchase. Accordingly the visual aspect plays a greater role in the global assessment of the likelihood of confusion (judgment in NLSPORT, NLJEANS, NLACTIVE and NLCollection, cited in paragraph 70 above, EU:T:2004:293, paragraph 50).

72 The Board of Appeal found, in paragraph 27 of the contested decision, that, in view of the average distinctive character of the earlier word mark and average degree of difference between the marks visually and phonetically, there was no likelihood of confusion, even in the case of identical goods. The Board of Appeal noted that the goods were primarily purchased after having been visually inspected and that they were not ordered or referred to orally, so that the visual aspect was of major importance.

73 Having regard to the case-law cited in paragraphs 70 and 71 above, those findings must be approved and the arguments advanced by the applicant cannot alter them.

74 In the first place, in so far as the applicant claims, in essence, that the phonetic similarity alone ought to have led to a finding of a likelihood of confusion, having regard to the fact that the goods at issue are partially identical and partially similar, it should be borne in mind that although the marks’ phonetic similarity alone could create a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, the existence of such a likelihood must be established as part of a global assessment of the conceptual, visual and phonetic similarities between the signs at issue. In that regard, the assessment of any phonetic similarity is but one of the relevant factors for the purpose of that global assessment (judgments of 23 March 2006 in Mülhens v OHIM, C‑206/04 P, ECR, EU:C:2006:194, paragraph 21, and doorsa FÁBRICA DE PUERTAS AUTOMÁTICAS, cited in paragraph 40 above, EU:T:2011:679, paragraph 60).

75 Therefore, it cannot be inferred from paragraph 28 of the judgment in Lloyd Schuhfabrik Meyer, cited in paragraph 17 above (EU:C:1999:323), that there is necessarily a likelihood of confusion each time that a mere phonetic similarity between two signs is established (judgments in Mühlens v OHIM, paragraph 74 above, EU:C:2006:194, paragraph 22, and doorsa FÁBRICA DE PUERTAS AUTOMÁTICAS, cited in paragraph 40 above, EU:T:2011:679, paragraph 61).

76 In the second place, in so far as the applicant takes the view that, having regard to the enhanced distinctive character of the earlier word mark, the Board of Appeal ought to have concluded that there was a likelihood of confusion, suffice it to note that it has been held, in paragraphs 39 to 66 above, that not only has the applicant not demonstrated the enhanced distinctive character of the earlier word mark, but, in any event, even if it were assumed that that mark had acquired an enhanced distinctive character, there would, from that point of view, be no more likelihood of confusion between the marks at issue.

77 It follows from all of the foregoing considerations that the single plea must be rejected as must the action in its entirety.

78 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party must be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.

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	Court of Justice of the European Communities (including Court of First Instance Decisions)
You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Calida v OHMI - Quanzhou Green Garments (dadida) (Judgment) [2015] EUECJ T-597/13 (23 October 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T59713.html Cite as: EU:T:2015:804, [2015] EUECJ T-597/13, ECLI:EU:T:2015:804

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