Appelrath-Cupper v OHMI - Ann Christine Lizenzmanagement (AC) (Judgment) [2015] EUECJ T-60/13 (23 September 2015)

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(Community trade mark — Opposition proceedings — Application for figurative Community trade mark AC — Earlier figurative national and international trade marks AC ANN CHRISTINE and earlier figurative Community trade marks AC ANN CHRISTINE OCEAN and AC ANN CHRISTINE INTIMATE — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

Reiner Appelrath-Cüpper Nachf. GmbH, established in Cologne (Germany), represented by C. Schumann and A. Berger, lawyers,

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

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

Ann Christine Lizenzmanagement GmbH & Co. KG, established in Vienna (Austria), represented by M. Hartmann, N. Voß and S. Fröhlich, lawyers,

ACTION for annulment brought against the decision of the Fourth Board of Appeal of OHIM of 28 November 2012 (Case R 108/2012-4), concerning opposition proceedings between Ann Christine Lizenzmanagement GmbH & Co. KG and Reiner Appelrath-Cüpper Nachf. GmbH,

composed of M. Prek, President, I. Labucka and V. Kreuschitz (Rapporteur), Judges,

having regard to the application lodged at the Court Registry on 6 February 2013,

having regard to the response of OHIM lodged at the Court Registry on 29 April 2013,

having regard to the response of the intervener lodged at the Court Registry on 14 May 2013,

having regard to the rejoinder of OHIM lodged at the Court Registry on 19 November 2013,

1 On 30 April 2010, the applicant, Reiner Appelrath-Cüpper Nachf. GmbH, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

3 The goods and services in respect of which registration was sought fall within, inter alia, Classes 9, 14, 18, 25 and 35 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 14: ‘Jewellery, real and imitation jewellery, including of different materials; horological and chronometric instruments, cufflinks, tie-pins; jewellery cases, jewellery boxes, boxes for clocks and watches’;

– Class 18: ‘Goods of leather and imitations of leather, namely handbags and other containers not adapted for objects being carried, and small leather goods; umbrellas’;

– Class 35: ‘Advertising, business management, business administration, office functions; presentation of goods and services in superstores, retail outlets, warehouses and online shops; operating superstores, retail outlets, warehouses and online shops, namely arranging and concluding of contracts for the buying and selling of goods, and the use of services (for others); operating online shops, electronic mail, namely order placement, delivery services and invoice management; display and demonstration of goods; retail services in relation to spectacles, sunglasses; retail services in relation to jewellery, real and costume jewellery, horological and chronometric instruments, cuff links, tie pins, jewellery cases, jewellery boxes, cases for clocks and watches; retail services in relation to printed matter, periodicals, magazines, cheque cards, identity cards, authorisation cards, service cards of plastic and/or paper (unencoded or fitted with magnetic strips), boxes of paper, gift wrap, gift boxes of paper and plastic, ribbons (included in class 16); retail services in relation to goods of leather and imitations of leather, namely handbags and other containers not adapted for the objects being carriers, and small leather goods, umbrellas and parasols; retail services in relation to textiles and textile goods, bed and table covers; retail services in relation to clothing, footwear, belts, headgear’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 127/2010 of 13 July 2010.

5 On 1 October 2010, the intervener, Ann Christine Lizenzmanagement GmbH & Co. KG, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 against registration of the mark applied for in respect of the goods and services referred to in paragraph 3 above.

– the following earlier figurative German mark registered under No 30 666 076:

– the international trade mark registration No 948 259, made on the basis of the German mark No 30 666 076 and designating a number of Member States of the European Union;

– the following earlier figurative German mark registered under No 30 666 074:

– the following earlier figurative Community trade mark, registered under No 6 904 783 for various goods in Classes 3, 9, 14 and 25:

– the following earlier figurative Community trade mark, registered under No 6 905 541 for various goods in Classes 3, 14 and 25:

7 The German mark No 30 666 076, the international registration No 948 259, made on the basis of that mark, and the German mark No 30 666 074 designate the same goods and services, including, in particular, those in Classes 9, 14, 18, 25 and 35 and corresponding, for each of those Classes, to the following description:

– Class 9: ‘Spectacles and parts therefor, in particular sunglasses, sports goggles, ski goggles, protective spectacles; spectacles frames; spectacle lenses, spectacle cases’;

– Class 14: ‘Precious metals and their alloys and goods in precious metals or coated therewith (included in this class); jewellery, finery, costume jewellery, precious stones; horological and chronometric instruments; watch straps’;

– Class 18: ‘Leather and imitations of leather, and goods made of these materials (included in this class); animal skins and hides; trunks, attaché cases and travelling bags; bags (included in this class 18), sport bags, handbags, school satchels, rucksacks; travelling sets; small leather goods included in this class; purses, pocket wallets, key wallets; belt bags and hip bags; umbrellas, parasols and walking sticks; whips, harness and saddlery’;

– Class 25: ‘Clothing, footwear, headgear; men’s and women’s outer clothing; children’s clothing; layette (clothing); underwear; lingerie; corsetry; hosiery; belts, braces, scarves, headscarves, gloves, ties, headbands; men and women’s bathing clothing; hiking, trekking, outdoor and climbing clothing; men and women’s city and leisure shoes, children’s shoes; hiking, trekking, outdoor and climbing footwear; clothing, footwear and headgear for soccer, basketball, handball and volleyball; clothing for jogging, fitness training and gymnastics; clothing, footwear and headgear for tennis, squash and badminton; clothing, footwear and headgear for inline skating, skateboarding and roller skating and for hockey, football, baseball and boxing; clothing, footwear and headgear for cycling; clothing, footwear and headgear for equestrian sports; clothing, footwear and headgear for golf; clothing, footwear and headgear for water sports, in particular for surfing, sailing, rowing and canoeing and diving; clothing, footwear and headgear for alpine skiing, cross-country skiing and snowboarding; clothing, footwear and headgear for ice skating and ice hockey; outerwear, in particular pullovers, slipovers, waistcoats, twin-sets, blouses, shirtblouses, dresses, skirts, including pantskirts, trousers, suits, combinaisons, coats, overalls, dungarees, parkas, anoraks, windcheater, shorts, jeans, shorts, housecoats, sports jackets, jackets, underwear, in particular t-shirts, undershirts, slips; hats, caps and bonnets; binders and tissues; bandanas, headscarves and sashes; bath robes and bathing caps; rainwear; boots, men’s, women’s, children’s and infant’s shoes and slippers; all aforementioned goods included in this class’;

– Class 35: ‘Advertising; business management; business administration; office functions; retail and wholesale services, also rendered via the Internet with goods mentioned in Classes 3, 9, 14, 18 and 25, in particular with preparations for beauty and body care, perfumery, eyeglasses and their parts, finery, costume jewellery, watches, leather and imitations of leather and goods made from these materials, bags, handbags, small articles of leather, clothing, footwear and headgear’.

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 15 November 2011, the Opposition Division rejected the opposition. In support of its decision, it found (i) that the goods and services designated by the mark applied for and the earlier German marks No 30 666 076 and No 30 666 074 (‘the earlier German marks’) respectively were identical or similar; (ii) the visual difference between the mark applied for and the earlier German marks was clearly perceptible; (iii) the similarity of those marks was limited to the pronunciation of the acronym ‘ac’; (iv) there was no conceptual similarity between those marks; (v) the relevant public was the average consumer having an average level of attention and (vi) accordingly, there was no likelihood of confusion between the mark applied for and the earlier German marks. The Opposition Division noted that the earlier international registration No 948 259 (‘the earlier international registration’) and the earlier German mark No 30 666 076 were identical. The Opposition Division added, finally, that the earlier Community marks No 6 904 783 and No 6 905 541 (‘the earlier Community marks’) and the earlier German mark No 30 666 076 were similar, but that, considering that the former contained word elements additional to the earlier German mark No 30 666 076, their similarity with the mark applied for was less than that which existed between the mark applied for and the earlier German mark No 30 666 076.

10 On 16 January 2012, the intervener filed a notice of appeal, in German, with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division. On 30 January 2012, the intervener filed an English language version of its appeal with OHIM. It filed a pleading with OHIM setting out the grounds of the appeal, in English, on 12 March 2012.

11 By decision of 28 November 2012 (‘the contested decision’), the Fourth Board of Appeal annulled the decision of the Opposition Division in part. It upheld the intervener’s appeal and accordingly upheld the opposition in full in respect of the goods in Classes 9, 14, 18 and 25 referred to in paragraph 3 above. It dismissed the appeal in respect of all the goods in Classes 16 and 24 referred to in paragraph 3 above and in respect of the services in Class 35 referred to in paragraph 3 above and corresponding to the following description: ‘retail services in relation to printed matter, periodicals, magazines, cheque cards, identity cards, authorisation cards, service cards of plastic and/or paper (unencoded or fitted with magnetic strips), boxes of paper, gift wrap, gift boxes of paper and plastic, ribbons (included in class 16); retail services in relation to textiles and textile goods, bed and table covers’. However, as regards the other services in Class 35 referred to in paragraph 3 above, the Board of Appeal upheld the intervener’s appeal and accordingly upheld the opposition.

12 In particular, the Board of Appeal held (i) that the relevant public, in respect of the goods in Classes 9, 14, 18 and 25, was the general public and, in respect of the services in Class 35, professionals such as businessmen and women; (ii) it was appropriate first to assess the likelihood of confusion as regards the earlier German marks and, accordingly, the relevant public was that present in Germany; (iii) the goods in Classes 9, 14, 18 and 25 designated by the earlier German marks were identical or similar to the goods designated by the mark applied for; (iv) the services in Class 35 designated by the mark applied for were different in part, namely ‘retail services in relation to printed matter, periodicals, magazines, cheque cards, identity cards, authorisation cards, service cards of plastic and/or paper (unencoded or fitted with magnetic strips), boxes of paper, gift wrap, gift boxes of paper and plastic, ribbons (included in class 16); retail services in relation to textiles and textile goods, bed and table covers’, from those designated by the earlier German marks; (v) the other services in Class 35 designated by the mark applied for were identical to the services designated by the earlier German marks; (vi) the signs at issue were visually similar to an average degree, phonetically identical but conceptually different; (vii) the earlier German marks had a normal degree of distinctiveness and (viii) accordingly, there was a likelihood of confusion with respect to the goods and services which were held to be identical or similar. According to the Board of Appeal, since the earlier international registration is protected for the same goods and services as the earlier German marks, the comparison of the goods and services cannot be different. Finally, according to the Board of Appeal, the earlier Community marks do not designate goods or services similar to those for which there is no similarity between the mark applied for and the earlier German marks.

– order the applicant to pay the costs of the present proceedings and the proceedings before OHIM.

16 The applicant puts forward two pleas in law alleging infringement of Rules 49(1) and 48(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1) and infringement of Article 8(1)(b) of Regulation No 207/2009 respectively.

17 The Court considers it appropriate to begin by examining the second plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.

18 The applicant contests the assessment made by the Board of Appeal that there is a likelihood of confusion between the marks at issue, in particular, on the basis of an allegedly incorrect assessment of the similarity of the signs at issue and of the distinctiveness of the earlier marks.

19 OHIM and the intervener dispute the applicant’s arguments and consider that the Board of Appeal was right in finding that there is a likelihood of confusion between the marks at issue.

20 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 cannot 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. In addition, in accordance with Article 8(2)(a)(i) and (ii) of Regulation No 207/2009, ‘earlier trade marks’ means Community trade marks and trade marks registered in a Member State with a date of application for registration which is earlier than that of the Community trade mark.

21 According to established 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 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 goods or services concerned and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

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

23 The parties do not dispute the assessment of the Board of Appeal according to which, as regards the likelihood of confusion with the earlier German marks — which it is appropriate to assess first in the present case — the relevant public is the German public and consists of, in respect of the goods in Classes 9, 14, 18 and 25, the general public and, with regard to services in Class 35, professionals such as businessmen and women (paragraph 16 of the contested decision).

24 The goods in Classes 9, 14, 18 and 25 are aimed at the general public and the services in Class 35 at professionals in the designated sectors. The assessment of the Board of Appeal with regard to the relevant public must therefore be upheld.

25 According to settled case-law, in order to assess the similarity of the goods or services concerned, all the relevant factors relating to those goods or services should be taken into account. Those factors include, inter alia, their nature, their intended purpose and 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 judgment of 11 July 2007 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and case-law cited).

26 As regards the comparison of goods and services in the present case, the parties do not dispute the findings of the Board of Appeal as to the identity or similarity of the goods and services designated by the mark applied for and those designated by the earlier German marks (paragraphs 17 to 26 of the contested decision). That assessment is not vitiated by any error and, accordingly, must be upheld.

27 The global assessment of the likelihood of confusion, so far as concerns 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, inter alia, their distinctive and dominant elements. 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, Case C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).

28 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. The comparison must be made by examining each of the marks at issue as a whole, but that 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 (see OHIM v Shaker, cited in paragraph 27 above, EU:C:2007:333, paragraph 41 and the case-law cited). 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 (OHIM v Shaker, cited in paragraph 27 above, paragraph 42, and judgment of 20 September 2007 in Nestlé v OHIM, C‑193/06 P, EU:C:2007:539, paragraph 42). That may be the case, in particular, where that component is likely by itself to dominate the image which the relevant public retains of that mark, with the result that all the other components of the mark are negligible in the overall impression created by the mark (Nestlé v OHIM, EU:C:2007:539, paragraph 43).

29 At the outset, it is appropriate to uphold the approach taken by the Board of Appeal in the contested decision, which consists, first of all, in an analysis of the likelihood of confusion of the mark applied for and the earlier German marks (paragraphs 16 and 40 of the contested decision) which, moreover, is not disputed by the parties. The earlier international mark was registered on the basis of the earlier German mark No 30 666 076 and is identical to the latter. The earlier Community marks are nearly identical to the earlier German mark No 30 666 076 and differ only in so far as they contain, respectively, an additional word element, namely ‘ocean’ and ‘intimate’ in a different colour, thereby making them even less similar to the mark applied for than the earlier German mark No 30 666 076.

30 The Board of Appeal found that the signs at issue were visually similar to an average degree, and that they were phonetically identical, but conceptually different (paragraphs 27 to 31 of the contested decision).

31 With regard to visual similarity, the Board of Appeal observed that, in the earlier German mark No 30 666 074, the letters ‘a’ and ‘c’ were separated and that the word elements ‘ann christine’ were positioned under the element ‘ac’. In the earlier German mark No 30 666 076, it points out that the letter ‘c’ is written across the lower right-hand part of the letter ‘a’ whereas the word elements ‘ann christine’ are positioned under the letter ‘a’ and cuts through the letter ‘c’. In the two signs, the word elements ‘ann christine’ are represented in a typeface that is much smaller than the element ‘ac’. The mark applied for also contains an element ‘ac’, the letters being attached to each other (paragraph 28 of the contested decision). According to the Board of Appeal, the mark applied for does not reproduce the word elements ‘ann christine’. However, in the earlier German marks, the combination of the letters ‘ac’ would, owing to its size and position, be dominant compared with the word elements ‘ann christine’ which are positioned under it. It is probable that the consumers will perceive the element ‘ac’ essentially as an indication of the commercial origin of the goods. The signs coincide in the word element ‘ac’, which is visually prominent in each of the signs at issue, independently of the typeface used, and they differ as regards the other elements of the earlier German marks. Overall, the marks at issue were similar to at least an average degree.

32 In so far as the applicant claims that the Board of Appeal was wrong to find that, in the earlier marks, the word element ‘ac’ was dominant and that it should therefore have taken into account the word elements ‘ann christine’ for the purposes of visual comparison of the signs, it should be noted that, in the context of the visual comparison of the signs at issue, the Board of Appeal did take into account the word elements ‘ann christine’ when making its assessment. It clearly follows from paragraph 29 of the contested decision, that the Board of Appeal found that the signs at issue ‘differ[ed] in the earlier trade mark’s other elements’, but that the word element ‘ac’ was visually prominent in the earlier marks because of its size and position.

33 In that regard, it is necessary to uphold the assessment of the Board of Appeal that, in the earlier German marks, the word element ‘ac’ constitutes the element that primarily attracts the attention of the relevant public. In the earlier German marks, the element ‘ac’ is considerably larger than the word elements ‘ann christine’. Those latter word elements are also positioned below the word element ‘ac’ in the earlier German marks. It is indeed true, as the applicant claims, that the word elements ‘ann christine’ explain the meaning of the abbreviation ‘ac’. However, that consideration cannot distract from the fact that the word element ‘ac’ is much more important than the other word elements in terms of the overall visual impression given by the earlier German marks.

34 However, it cannot be claimed that, as the Board of Appeal stated in paragraphs 28 and 29 of the contested decision, the signs at issue coincide in the word element ‘ac’ irrespective of the typeface used and that, overall, they are similar to at least an average degree despite the fact that they differ with regard to the word elements ‘ann christine’ of the earlier German marks.

35 As the applicant rightly submits, the graphic representation of the letters ‘a’ and ‘c’ in the mark applied for differs considerably from the way in which those letters are represented in the earlier German marks. First, in the mark applied for, the letters ‘a’ and ‘c’ are represented in a typeface with serifs, thus giving the mark applied for a more traditional aspect than that given to the earlier German marks by using a typeface without serifs, which is therefore more modern. Secondly, in the mark applied for, the downward diagonal trunk of the letter ‘a’ is merged with the belly of the letter ‘c’ to create a kind of ligature which is original, since it does not exist in German classical typography. In the earlier German mark No 30 666 076, a part of the belly of the letter ‘c’ cuts across the letter ‘a’ at the point place where it meets its downward diagonal trunk. However, in the earlier German mark No 30 666 074, the letters ‘a’ and ‘c’ are not superimposed at all. The impression given by the mark applied for is therefore that of a typographical construction whereas the earlier German mark No 30 666 076 appears to be a geometric construction and the earlier German mark No 30 666 074 does not contain any element of that kind. Thirdly, the letters ‘a’ and ‘c’ are placed on the same baseline in the mark applied for, which is also the case for the earlier German mark No 30 666 074, but not for the earlier German mark No 30 666 076 in which the letter ‘c’ is placed below the baseline of the letter ‘a’.

36 Overall, it must be noted therefore that, as regards the word element ‘ac’, the signs at issue correspond only to the extent that they contain the upper-case letters ‘a’ and ‘c’ in that order. Their graphic representation in the signs is significantly different. Taking into account also the fact that they differ in so far as the mark applied for does not contain the word elements ‘ann christine’, which are certainly less important than the word element ‘ac’ in the earlier German marks, it must be concluded that there is a low degree of visual similarity between the mark applied for and the earlier German marks and that, therefore, the Board of Appeal erred in holding that they had at least an average degree of similarity.

37 As regards phonetic similarity, the Board of Appeal found that the additional words ‘ann’ and ‘christine’ in the earlier marks represented three more syllables than the word element that is common to the marks at issue, namely ‘ac’. In the view of the Board of Appeal, it cannot be ruled out that consumers will shorten the earlier marks by pronouncing only the letters ‘a’ and ‘c’. In that case, it is contended, the signs would be identical (paragraph 30 of the contested decision).

38 It is, admittedly, true that the signs at issue would be phonetically identical if, as OHIM and the intervener also contend, it is very likely that the relevant public will shorten the earlier German marks, when pronounced, to the word element ‘ac’ only.

39 However, it should be noted that the word elements ‘ann christine’ also contained in the earlier German marks reproduce the word element ‘ac’ and explain its meaning. The forenames ‘Ann’ and ‘Christine’ and their variations such as, respectively, ‘Anne’ and ‘Christin’ are very common in German and are often combined in that order. In such circumstances it is very likely that the relevant German public will pronounce that combination of very common forenames and will not limit itself to the abbreviation ‘ac’. It is even highly likely that the relevant German public will not pronounce the abbreviation ‘ac’ at all and will restrict itself to the word elements ‘ann christine’, which reproduce and explain the content of the word element ‘ac’.

40 In so far as the intervener contends that, in the fashion sector, consumers are very used to two-letter or three-letter combinations being used as indications of commercial origin, it suffices to note that, while consumers are accustomed to acronyms consisting of two or three letters being used to refer to trade marks that reproduce the initials of the words from which they are composed, the average consumer will none the less tend not to pronounce the letters of the acronym, but the words beginning with those initials, except in cases where the acronym itself is well known.

41 It follows that, in the present case, the relevant German public will have the tendency to omit, when pronouncing the earlier German marks, the word element ‘ac’ and to restrict itself to pronouncing the word elements ‘ann christine’. As the mark applied for is composed of the sole word element ‘ac’, it must be concluded that it is different from the earlier German marks and that, therefore, the Board of Appeal erred in finding that those marks were phonetically identical.

42 As regards the conceptual similarity of the signs at issue, the Board of Appeal was right to find that none of the signs at issue have a meaning in German (paragraph 31 of the contested decision), which excludes conceptual similarity. Moreover, the parties do not dispute that assessment.

43 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 designated. 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 of 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74).

44 The Board of Appeal found that the earlier marks, taken together, had no meaning in relation to the goods and services they are registered for and that they therefore had to be considered to be inherently distinctive (paragraph 34 of the contested decision). The distinctive character of the earlier trade marks is, it contends, normal (paragraph 36 of the contested decision). As regards goods and services relating to clothing, footwear and headgear, the visual aspect of the signs at issue was more important in the global assessment of the likelihood of confusion in so far as the choice of clothes is usually made on the basis of a visual evaluation (paragraph 37 of the contested decision). The signs at issue are, it is contended, visually similar and phonetically identical. It follows that there is a likelihood of confusion regarding the goods and services that are identical or similar to the extent that the public might believe that the goods and services designated by the marks at issue have the same commercial origin (paragraphs 35 and 37 of the contested decision).

45 In that regard, the Board of Appeal was right to find that the earlier German marks had a normal degree of distinctiveness. To the extent that the applicant submits that, in general, the distinctiveness of two-letter signs, such as those consisting of the word element ‘ac’, is very low, it should be noted that the present case in no way concerns a word mark consisting of the element ‘ac’, and that the marks at issue are figurative signs that contain original graphic representations of that element. It follows that, even assuming that one should consider the distinctiveness of the word element ‘ac’ contained in a word mark to be very low, that does not undermine the distinctive character of a graphical representation of that element in figurative marks such as those at issue in the present case.

46 However, it should be noted that the visual and phonetic comparison of the earlier German marks with the mark applied for is vitiated by error in so far as the Board of Appeal concluded that the signs at issue were visually similar and phonetically identical.

47 In terms of the visual comparison, due to the graphic representation of the word element ‘ac’, common to the signs at issue, which is significantly different in the mark applied for, and in the light of the difference, although less important, resulting from the fact that the mark applied for does not contain the word elements ‘ann christine’, it should be noted that there is only a low degree of visual similarity between the mark applied for and the earlier German marks.

48 In that regard, it should be noted that, as the Board of Appeal rightly observed in paragraph 37 of the contested decision, in terms of goods and services relating to clothing, footwear and headgear, the relevant public will make a visual assessment of the goods and services and that, therefore, the visual aspect of the marks is more important in the overall assessment of the likelihood of confusion (see, to that effect, judgment of 24 January 2012 in El Corte Inglés v OHIM — Ruan (B), T‑593/10, EU:T:2012:25, paragraph 47 and the case-law cited). However, in the present case, there is only a low degree of visual similarity.

49 As regards the phonetic comparison of the signs, it should be noted that, due to the fact that the relevant public will concentrate on the word elements ‘ann christine’ when pronouncing the earlier marks, the signs at issue are different.

50 Taking into consideration the fact that the signs at issue are not conceptually similar either, it must be concluded that, overall, the mark applied for is similar to the earlier German marks to a low degree only.

51 Whereas that conclusion is also valid with regard to the earlier international mark which was registered on the basis of the earlier German mark No 30 666 076 and which is therefore identical to the latter, it is all the more valid with regard to the earlier Community marks which, compared with the earlier German mark No 30 666 076, are even more different from the mark applied for owing to the presence of an additional word element, namely ‘ocean’ and ‘intimate’ respectively, in another colour.

52 In view of the above, given, in particular, that the signs at issue are similar to a low degree only and that they have a normal degree of distinctiveness, it must be concluded that, overall, despite the fact that the goods and services for which the mark applied for seeks registration are partly identical and partly similar to those designated by the earlier marks, there is no likelihood of confusion between the marks at issue on the part of the relevant public.

53 Since the applicant’s second plea is founded, the contested decision must be annulled in so far as it upheld the opposition in part, without it being necessary to examine the first plea.

54 Under Article 134(1) 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. In addition, under Article 134(2), where there are several unsuccessful parties the Court is to decide how the costs are to be shared.

55 In the present case, the applicant requested that OHIM be ordered to pay the costs and that the intervener be ordered to pay the costs of the proceedings before OHIM. As regards the applicant’s claim that the intervener should be ordered to pay the costs of the proceedings before OHIM, it should be borne in mind that, under Article 190(2) of the Rules of Procedure, costs necessarily incurred by the parties for the purposes of the proceedings before the Board of Appeal are to be regarded as recoverable costs. However, costs incurred for the purposes of the proceedings before the Opposition Division are not, in any event, recoverable costs.

56 Since OHIM and the intervener have been unsuccessful in the present case, they must be ordered to pay the costs, in accordance with the form of order sought by the applicant which, as regards the intervener, relate only to the costs necessarily incurred by the applicant for the purposes of the proceedings before the Board of Appeal.

57 As regards the sharing of the costs incurred by the applicant, OHIM must be ordered to pay half of those costs and the intervener must be ordered to pay half the costs incurred for the purposes of the proceedings before the Board of Appeal.

1. Orders that the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 28 November 2012 (Case R 108/2012-4) is annulled in so far as it upheld in part the opposition brought by Ann Christine Lizenzmanagement GmbH & Co. KG.

2. Orders OHIM to bear its own costs and to pay half the costs incurred by Reiner Appelrath-Cüpper Nachf. GmbH.

3. Orders Ann Christine Lizenzmanagement GmbH & Co. KG to bear its own costs and to pay half the costs incurred by Reiner Appelrath-Cüpper Nachf. GmbH for the purposes of the proceedings before the Board of Appeal.

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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) >> Appelrath-Cupper v OHMI - Ann Christine Lizenzmanagement (AC) (Judgment) [2015] EUECJ T-60/13 (23 September 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T6013.html Cite as: ECLI:EU:T:2015:677, EU:T:2015:677, [2015] EUECJ T-60/13

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