Infocit v OHMI - DIN (DINKOOL) (Judgment) [2015] EUECJ T-85/14 (10 February 2015)

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(Community trade mark — Opposition proceedings — Application for Community word mark DINKOOL — Earlier international figurative mark DIN — Earlier national business identifier DIN — Relative grounds for refusal — Likelihood of confusion — Article 8(1)(b) and Article 8(4) of Regulation (EC) No 207/2009)

Infocit — Prestação de Serviços, Comércio Geral e Indústria, Lda, established in Luanda (Angola), represented by A. Oliveira, lawyer,

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

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

DIN — Deutsches Institut für Normung eV, established in Berlin (Germany), represented by M. Bagh, lawyer,

ACTION brought against the decision of the Second Board of Appeal of OHIM of 12 November 2013 (Case R 1106/2012-2) concerning opposition proceedings between DIN — Deutsches Institut für Normung eV and Infocit — Prestação de Serviços, Comércio Geral e Indústria, Lda,

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

having regard to the application lodged at the Court Registry on 7 February 2014,

having regard to the response of OHIM lodged at the Court Registry on 8 May 2014,

having regard to the response of the intervener lodged at the Court Registry on 5 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, to give a ruling without an oral procedure, pursuant to Article 135a of the Rules of Procedure of the General Court,

1 On 25 February 2011, the applicant (Infocit — Prestação de Serviços, Comércio Geral e Indústria, Lda) filed an application for registration of a Community trade mark at the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

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

3 The goods in respect of which registration was sought are in Classes 7, 9 and 11 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 7: ‘Machines and machine tools; Semi-conductor manufacturing apparatus; Machine coupling and transmission components (except for land vehicles); Agricultural implements; Incubators for eggs; Washing machine[s]; Spin driers; Dish washers; Dish drying machines; Shredding machines; Industrial robots; Electronic parts placing machines; Sorting and packing machines; Dry cleaning apparatus; Ironing pressers for laundry; Industrial vacuum cleaners; Pumps; Dynamos; Compressors; Threshing machines; Milling machines; Electric can openers; Electric scissors; Electric hand drills; Food blenders; Automatic juicers; Electric ice grinders; Meat grinders; Food processors; Industrial floor polishers; Electric waste disposers for industrial use; Electric vacuum cleaners; Floor polishers for household use; Electric grinders; Rice washing machines; Parts, accessories and fittings for all the aforesaid goods’;

– Class 9: ‘Scientific, nautical, surveying, electrical, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Cash registers; Calculating machines; Fire-extinguishing apparatus; Apparatus for receiving, amplifying, converting, equalising, controlling, recording, transmitting and/or reproducing audio and/or video signals; Magnetic recording media; Records; Radio receivers; Record players; Compact disc audio recorders and/or reproducers; Amplifiers; Loudspeakers; Radio tuner-receivers; Analogue to digital converters; Digital to analogue converters; Decoders; Equalizers; Control apparatus for audio signals; Microphones; Headphones; Earphone[s]; Radios and/or stereo[s] for automobiles; Compact disc changers; Magnetic video tape recorders and/or players; Video disc recorders and/or players; Video cameras; Projectors; Televisions; Monitoring cameras and displays therefor; Navigational instruments; Telephone apparatus and instruments; Telephone answering machines; Radio pagers; Optical lenses; Bushings, plugs; Computers and data-processing apparatus; [A]pparatus for use with computers and data processing apparatus; Word processors; Computer programs; Electronic printers; Electric irons; Smoke sensors; Door bells and household bells; Batteries and electric cells; Electric chargers; Electric emergency calls, alarms, control, protection and safety apparatus and instruments; Electric and electronic timers; Automatic vending machines; Money counting and sorting machines; Luminous signboards for traffic or fire hydrants, [luminous signs]; Incubators for use [in] biological laboratories and other research institutions to create [a] constant temperature environment for culture of bacteria, microorganisms and plant life; Automatic temperature recorders; Parts and accessories for all the aforesaid goods’;

– Class 11: ‘Apparatus for lighting, heating, steam generating, refrigerating, drying, ventilating and water supply purposes; Lamp bulbs; Lighting installations; Electric lamps; Hand lamps; Fluorescent lamps; Lanterns; Vehicle lights; Emergency lamps; Dynamo lighting sets and bulbs; Microwave ovens; Ovens; Ranges; Cooking stoves; Grills; Induction heating plates for cooking; Electrical trays for keeping food warm; Toasters; Hot plates; Electric pans; Electric beverage heaters; Automatic rice cookers; Electric deep fryers; Electric coffee machines; Bread makers; Portable containers with electrically [controlled] temperature for keeping articles of food at a [specific] temperature; Microwave defrosters; Food and/or drink warmers for commercial use; Towel steamers; Automatic water supplying apparatus and instruments; Refrigerators; Freezers; Refrigerators for use in cars; […]; Ice cube makers; Electric fans; Ventilating fans; Ventilators for vehicles; Exhaust fans; Heaters; Gas heaters; Electrical heating apparatus; Air [conditioners]; Central heating and cooling apparatus and instruments; Humidifiers; Dehumidifiers; Space heaters; Electric foot warmers; Electrically heated carpets; Electric blankets; Water coolers; Water chillers; Water heaters; Boilers; Water cooling towers; Fan coil units; Water purifiers; Bath units; Bathroom heaters; Sinks; Dryers; Electric hair dryers; Electric [waste] disposers for consumer use; Incinerators; Sterilizers; Gas boilers; Parts and fitting[s] for all the aforesaid goods’.

4 The Community trade mark application was published in Community Trade Marks Bulletin No 69/2011 of 8 April 2011.

5 On 25 May 2011, the intervener (DIN — Deutsches Institut für Normung eV) filed a notice of opposition, pursuant to Article 41 of Regulation No 207/2009, to registration of the mark applied for, in respect of the goods referred to in paragraph 3 above.

6 The opposition was based, first, on the figurative mark depicted below, registered as an international trade mark under No 229 048 and producing its effects in several Member States of the European Union, including Germany:

7 That mark covers goods in Classes 1 to 34 corresponding, for each of those classes, to the following description:

– Class 1: ‘Food preserving products; chemical products for industry, science and photography, extinguishing products, tempering substances, solders, mineral raw materials; soil fertilizers; resins, adhesive agents, finishes, tanning materials; raw and semi-processed materials for manufacturing paper; combusting preparations’;

– Class 2: ‘Dyestuffs, colorants, metal sheets; varnishes, lacquers, mordants, resins; rust protection agents; wood preserving materials’;

– Class 3: ‘Polishes, substances for glazing and preserving leather, floor wax; bath salts; wax; perfumery, cosmetics, essential oils, soaps, washing and bleaching substances, laundry starch, starch preparations, laundry blueing, stain removing substances, cleaning and polishing substances (except for leather), abrasives’;

– Class 4: ‘Substances for preserving leather; fuels; wax, lighting materials, industrial oils and greases, lubricants, benzine; candles, night lights, lamp wicks; combusting preparations’;

– Class 5: ‘Medicines, chemical products for medical and sanitary use, pharmaceutical drugs and preparations, plasters, surgical dressings, herbicides and preparations for destroying vermin, disinfectants; dental impression materials, dental filling materials; mineral water salts and bath salts; bandages for medical use; dietetic foodstuffs’;

– Class 6: ‘Mineral raw materials; base, rough or semi-wrought metals, horseshoes and farrier’s nails; enamelled and tinned products; building components for railway superstructures, small ironware, locksmithing and blacksmithing pieces, closing devices, fittings of metal, articles made of metallic thread, goods made of sheet metal, anchors, chains, balls and steel balls, bells, hooks and eyelets, safety boxes and chests, mechanically shaped metals, laminated and cast construction materials, machine cast iron; metal cables; objects made of nickel, aluminium, German silver, Britannia metal and other alloys; lathe-turned, sculptured and braided articles; flexible tubes; wallpapering accessories; signboards and signboard plates; works of art’;

– Class 7: ‘Manufactured objects for technical use, made of rubber and rubber substitutes; machines, machine parts, transmission belts’;

– Class 8: ‘Cutlery, tools, scythes, sickles, edged weapons; manufactured objects for technical use, made of rubber and rubber substitutes; barn, gardening and agricultural tools’;

– Class 9: ‘Asbestos products; manufactured objects for technical use, made of rubber and rubber substitutes; life-saving apparatus, fire-extinguishers; physics, chemical, optical, surveying, nautical, electrical engineering, weighing, signalling, checking and photographic apparatus and instruments, measuring instruments; automatic vending machines, signboards’;

– Class 10: ‘Surgical and medical as well as sanitary apparatus and instruments, prostheses, eyes, teeth’;

– Class 11: ‘Apparatus and utensils for lighting, heating, cooking, refrigerating, drying and ventilating, water pipes, bathroom and toilet installations’;

– Class 12: ‘Land, air and water vehicles, automobiles, velocipedes, automobile and velocipede accessories, vehicle parts; manufactured objects for technical use, made of rubber and rubber substitutes; transmission belts’;

– Class 14: ‘Precious metals, objects made of gold, silver and other alloys, jewellery and fashion jewellery; turned or carved objects; works of art; clock and watchmaking articles (clocks, watches) and parts thereof’;

– Class 15: ‘Musical instruments, parts and strings for said instruments’;

– Class 16: ‘Paintbrushes; glues; paper, cardboard, products made of paper and cardboard, raw and semi-processed material for making paper; photographic products and printed matter, playing cards, signboards and signboard plates, letters, printing blocks, works of art; writing, drawing, painting and modelling articles, marking chalk, office and counter utensils (except furniture), teaching media’;

– Class 17: ‘Mineral raw materials; packing and stopping materials, heat retaining materials, insulating materials, asbestos products; cushioning materials used by mattress makers, packaging materials; raw materials and manufactured objects for technical use, made of rubber and rubber substitutes; flexible tubes; raw materials and objects made of mica’;

– Class 18: ‘Fittings for harnesses, harnesses; skins, gut, leather, furskins; umbrellas and parasols, walking sticks, travel goods; saddlery, leatherware, leather articles’;

– Class 19: ‘Mineral raw materials; asbestos products; manufactured objects for technical use, made of rubber and rubber substitutes; sculpted objects; works of art; raw materials and objects of clay; natural and artificial stones, cements, lime, gravel, plaster, pitch, asphalt, tar, reed mats, roofing paper, mobile homes, chimneys, building materials’;

– Class 20: ‘Objects made of wood, bone, cork, horn, shell, whalebone, ivory, mother-of-pearl, amber, meerschaum, celluloid and substitutes of all these materials; lathe-turned, sculptured and braided articles, picture frames, dressmakers’ and hairdressers’ dummies; furniture, mirrors, upholstered furniture, beds, coffins; signboards and signboard plates, works of art’;

– Class 21: ‘Cooking utensils; silks, bristle, hair for brushes, brushware, combs, sponges, toilet utensils, cleaning equipment, steel wool; enamelled and tinned products; manufactured objects for technical use, made of rubber and rubber substitutes; turned or carved objects; household and kitchen utensils, barn, gardening and agricultural tools; signboards and signboard plates, works of art; raw materials and objects made of porcelain, clay and glass’;

– Class 22: ‘Rope-making goods, nets; textile fibres, cushioning materials used by mattress makers, packaging materials; wallpapering accessories; tents, sails, bags’;

– Class 24: ‘Linen; raw and semi-processed material for making paper; canvases, oilcloth, blankets, curtains, flags; textiles, knitted fabrics, felt’;

– Class 25: ‘Headgear, fashion goods; footwear; stockings, socks, knitted articles; clothing, lingerie, corsets, neckties, braces, gloves; belt articles’;

– Class 26: ‘Hairdressing headwear, hairstyles (hairdos), fashion goods, artificial flowers; pins and needles, hooks and eyelets; lace trimmings; braided articles; wallpapering accessories; passementerie, ribbons, edgings, buttons, lace, embroidery’;

– Class 28: ‘Fish hooks; skates; Christmas tree trimmings, billiard cue chalk; games, toys and playthings, sports and gymnastics devices’;

– Class 29: ‘Fishing and hunting fare; meat, fish, meat extracts, preserves, vegetables, fruits, jellies; eggs, milk, butter, cheeses, margarine, edible oils and fats’;

– Class 30: ‘Coffee, coffee substitutes; tea, sugar, syrup, honey, flours, appetizers, pasta, condiments, spices, sauces, vinegar, mustard, cooking salt; cocoa, chocolate, sugar confectionery, sugar confectionery and pastry products, yeast, baking powder; ice’;

– Class 31: ‘Agricultural, silvicultural, horticultural, animal raising and fishing products; vegetables, fruits; malt, fodder; raw and semi-processed material for making paper’;

– Class 34: ‘Matches; raw tobacco, manufactured tobacco, cigarette paper’.

8 The opposition was also based on the earlier non-registered sign DIN, used in the course of trade in Germany for the development of norms, standards and technical rules as a service to industry, the State and society as a whole.

9 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b), (4) and (5) of Regulation No 207/2009.

11 On 13 June 2012, 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.

12 By decision of 12 November 2013 (‘the contested decision’), the Second Board of Appeal of OHIM upheld the appeal brought by the intervener, annulled the Opposition Division’s decision and refused the Community trade mark application in its entirety. First, the Board of Appeal partially upheld the opposition based on Article 8(1)(b) of Regulation No 207/2009, on the ground that there was a likelihood of confusion between the signs at issue on the part of the relevant public in respect of all the goods in Class 7 and some of the goods in Classes 9 and 11. Secondly, regarding the goods in Classes 9 and 11 in respect of which registration had been sought and which were dissimilar to the goods covered by the earlier trade mark, the Board of Appeal upheld the opposition based on Article 8(4) of Regulation No 207/2009, finding that the use without due cause of the sign DINKOOL would take unfair advantage, for the purposes of Paragraph 15(3) of the Gesetz über den Schutz von Marken und sonstigen Kennzeichen (German Law on the Protection of Trade Marks and Other Signs) of 25 October 1994 (BGBl. 1994 I, p. 3082, and BGBl. 1995 I, p. 156) (‘the Markengesetz’), of the earlier sign DIN used in the course of trade in Germany.

15 The intervener contends that the Court should dismiss the action in its entirety.

16 In support of its action, the applicant raises two pleas in law, alleging respectively: (i) infringement of Article 8(1)(b) of Regulation No 207/2009; and (ii) infringement of Article 8(4) of that regulation.

17 The applicant claims, in essence, that the Board of Appeal infringed Article 8(1)(b) of Regulation No 207/2009, in so far as it concluded that there was a likelihood of confusion between the signs at issue even though those signs are dissimilar. The applicant adds that, in reality, the intervener does not market any goods and, consequently, should not keep the right to the earlier trade mark, a point which could have been raised in the proceedings before OHIM.

19 First of all, it is necessary to reject the applicant’s argument that the intervener cannot rely on the protection of the earlier trade mark because it does not market any goods.

20 By that argument, the applicant is, in essence, claiming that there is no proof of genuine use of the earlier trade mark.

21 Nevertheless, according to case-law, such a lack of proof can be penalised by rejecting the opposition only where the applicant has expressly and timeously requested such proof before OHIM, pursuant to Article 42(2) of Regulation No 207/2009 (see, to that effect, judgments of 7 September 2006 in Meric v OHIM — Arbora & Ausonia (PAM-PIM’S BABY-PROP), T‑133/05, ECR, EU:T:2006:247, paragraph 33 and the case-law cited, and of 22 April 2008 in Casa Editorial el Tiempo v OHIM — Instituto Nacional de Meteorología (EL TIEMPO), T‑233/06, EU:T:2008:121, paragraph 26).

22 In the present case, however, the evidence in the case-file does not show that the applicant requested before OHIM that proof be provided of genuine use of the earlier trade mark. On the contrary, it can be seen both from the applicant’s written pleadings and from paragraphs 5 and 10 of the contested decision that the applicant did not file any observations before the Opposition Division or the Board of Appeal.

23 Consequently, the likelihood of confusion between the marks in question must be assessed by taking into account all the goods protected by the earlier trade mark (see, to that effect, judgment in EL TIEMPO, paragraph 21 above, EU:T:2008:121, paragraph 27).

24 Secondly, it is necessary to examine the arguments raised by the applicant regarding the Board of Appeal’s assessment of the likelihood of confusion between the signs at issue.

25 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the mark applied for is not to be registered if, because it is identical or similar to the earlier trade mark and the goods or services respectively covered by the trade marks are identical or similar, 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 is to be understood as including the likelihood of association with the earlier trade mark. Moreover, pursuant to Article 8(2)(a)(iii) of that regulation, ‘earlier trade marks’ should be taken to mean trade marks registered under international arrangements which have effect in a Member State, with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.

26 It is settled case-law that 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 line of authority, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned and account being taken of 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 covered (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).

27 It is in the light of those principles that the Board of Appeal’s assessment of the likelihood of confusion between the signs at issue must be examined.

28 As the Board of Appeal rightly found in paragraphs 29 and 30 of the contested decision (a finding which was not contested by the applicant), the relevant territory is Germany and the relevant public within that Member State comprises, for the goods in Classes 7, 9 and 11, both the general public — reasonably well informed, observant and circumspect and with a level of attention which, in view of the type of goods in question and the technical nature of those goods, is slightly higher than average — and professionals, whose level of attention is higher still.

29 In paragraph 31 of the contested decision, the Board of Appeal found, agreeing with almost all the statements made by the Opposition Division (set out in paragraph 6 of that decision), that the goods in question were partly identical, partly similar, and partly dissimilar. In view of the nature and use of the goods in question, those findings, which are not contested by the applicant, must be confirmed.

30 That conclusion is not called in question by the applicant’s argument that the intervener does not sell any goods under the earlier trade mark, but confines itself to providing services: since the earlier trade mark was registered in respect of the goods referred to in paragraph 7 above, it is with regard to those goods that the Court, like the Board of Appeal, must examine the likelihood of confusion (see, to that effect, judgment in EL TIEMPO, paragraph 21 above, EU:T:2008:121, paragraph 27).

31 The global assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the signs at issue, be based on the overall impression given by those signs, account being taken, in particular, of 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 the 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).

32 The fact that a sign consists exclusively of an earlier trade mark, to which another word has been added, is an indication that the two marks are similar (judgment of 12 November 2008 in ecoblue v OHIM — Banco Bilbao Vizcaya Argentaria (Ecoblue), T‑281/07, EU:T:2008:489, paragraph 28; see also, to that effect, judgment of 4 May 2005 in Reemark v OHIM — Bluenet (Westlife), T‑22/04, ECR, EU:T:2005:160, paragraph 40).

33 In the present case, the signs under comparison are the earlier figurative mark DIN and the contested word sign DINKOOL.

34 In the contested decision, the Board of Appeal found, first of all, that the signs at issue were visually similar to the extent that, in essence, the word element ‘din’ — located at the beginning of the contested sign — was common to both and the differences relating to the word element ‘kool’ in the contested sign and the figurative elements of the earlier trade mark were not of such a kind as to affect that finding (paragraph 34 of the contested decision). Next, while noting that there was a slight difference aurally between the signs at issue in terms of rhythm and intonation, the Board concluded that there was a certain degree of aural similarity, owing to the fact that the word element ‘din’ is present in both (paragraph 35 of the contested decision). Lastly, regarding the conceptual comparison, the Board held in paragraph 36 of the contested decision that the earlier trade mark DIN would be perceived as a ‘fanciful designation’, but noted that a significant part of the relevant public would understand it to be an acronym of the intervener’s name. According to the Board, the word ‘kool’ in the contested sign would be perceived as a misspelling of ‘cool’ which is understood and used in Germany. The Board went on in paragraph 36 to infer from this that the signs at issue were conceptually dissimilar, although it assumed that that conceptual difference would carry little weight as the word ‘kool’ would be understood by the relevant public either as descriptive of certain goods or as laudatory with regard to others. The Board of Appeal added in paragraph 37 of the contested decision that consumers would break the contested sign DINKOOL down into two syllables: ‘din’ and ‘kool’.

35 The applicant submits that those findings of the Board of Appeal are incorrect, because the signs at issue are dissimilar.

36 First, the applicant submits that the signs at issue are visually dissimilar, since the earlier trade mark consists of a single three-letter syllable, while the contested sign consists of two syllables comprising seven letters in all.

37 It is common ground that the word element ‘din’ is present in both signs at issue. That element is the only word element present in the earlier trade mark and the initial component of the contested sign.

38 Those signs differ as a result of (i) the figurative elements of the earlier trade mark, that is to say, two horizontal bars located above and below the word ‘din’, which are not very striking in the visual impression conveyed by that mark, and (ii) the addition of the word element ‘kool’ to the element ‘din’ in the contested sign.

39 Nevertheless, in view of the case-law referred to in paragraph 32 above, it must be found that, given that the word element ‘din’ is identical in both marks, the points of dissimilarity noted in paragraph 38 above are not sufficient to dispel the relevant consumer’s impression that there is a certain degree of visual similarity between those signs when assessed overall.

40 That conclusion is all the more cogent in view of the fact that ‘din’ is the initial component of the contested sign. According to case-law, consumers normally attach more importance to the beginnings of words (judgments of 17 March 2004 in El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, ECR, EU:T:2004:79, paragraph 81, and 7 February 2013 in AMC-Representações Têxteis v OHIM — MIP Metro (METRO KIDS COMPANY), T‑50/12, EU:T:2013:68, paragraph 40).

41 It follows that there is a certain degree of visual similarity between the signs at issue.

42 Secondly, regarding the aural comparison of the signs at issue, the applicant submits that the signs are dissimilar, owing to the fact that they are not made up of the same number of letters and syllables.

43 It is common ground that the signs at issue are of differing lengths. While the earlier trade mark comprises only one syllable (‘din’) composed of three letters, the contested sign comprises two syllables (‘din’ and ‘kool’), composed of seven letters in all. It necessarily follows, as the Board of Appeal rightly found in paragraph 35 of the contested decision, that there is a slight difference between those signs in terms of rhythm and intonation. In addition, contrary to OHIM’s assertions, that difference is capable of affecting the word element ‘din’, since, as a result of the addition of the word ‘kool’, German-speaking consumers could be led, when voicing the element ‘din’, to shorten the vowel ‘i’ as compared with their pronunciation of the word ‘din’ on its own, or to pronounce the letter ‘n’ of the contested sign in such a way that it is inseparable from the letter ‘k’ of that sign.

44 Therefore, as the Board of Appeal noted in paragraph 35 of the contested decision, there is only a certain degree of aural similarity between the signs at issue.

45 Thirdly, the applicant submits that there is a ‘profound [conceptual] dissimilarity’ between the signs at issue. In its view, the earlier trade mark DIN will be clearly understood by the relevant public as a reference to the intervener’s name. By contrast, the contested sign will be understood — despite the presence of the letter ‘k’ at the beginning of the syllable ‘kool’ — as comprising the English words ‘din’ and ‘cool’ and will therefore be understood to mean ‘cool noise’.

46 In that regard, it should be borne in mind that, according to case-law, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, he will break it down into elements which, for him, have a real meaning or which resemble words known to him (judgments of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 57; 13 February 2008 in Sanofi-Aventis v OHIM — GD Searle (ATURION), T‑146/06, EU:T:2008:33, paragraph 58; and judgment in Ecoblue, paragraph 32 above, EU:T:2008:489, paragraph 30).

47 In the present case, as highlighted by the intervener, the word ‘dinkool’ which constitutes the contested sign has no meaning in German. It is a fanciful word.

48 None the less, in the light of the case-law cited in paragraph 46 above, it is appropriate to find that the relevant public, when perceiving the sign DINKOOL, will break that sign down into its two syllables ‘din’ and ‘kool’ since, as the Board of Appeal rightly noted in paragraph 37 of the contested decision, that public will understand the element ‘kool’ to be a misspelling of the English word ‘cool’. Furthermore, the applicant itself acknowledges that particular way of dividing up the contested sign by arguing that German consumers understand the words ‘din’ and ‘kool’ as two English words.

49 However, it should be observed that ‘din’ — the single word element of the earlier trade mark and the initial component of the contested sign — may be perceived by the relevant public as either a fanciful word with no meaning whatsoever or as a reference to the intervener’s name, of which it is an acronym.

50 It should also be observed that the word element ‘kool’, which the consumer will understand as a reference to the English adjective ‘cool’, is a common English word which can be easily understood by the German public and which is often used in colloquial German. That word will be understood by the relevant public as meaning, inter alia, ‘good’, ‘excellent’ or ‘perfect’, with the result that it will be perceived as being laudatory with regard to the quality of the goods. In addition, since it also means ‘cold’, it may be understood as descriptive of some of the goods in Class 11.

51 It follows that, contrary to the Board of Appeal’s findings in paragraph 36 of the contested decision, there is — as OHIM essentially pointed out — a certain degree of conceptual similarity between the signs at issue for the part of the relevant public which understands the component ‘din’ to be a reference to the intervener’s name. On the other hand, it is not possible to conclude that there is any conceptual similarity between the signs in question for the part of the relevant public which does not make that connection between ‘din’ and the intervener’s name and which perceives the words ‘din’ and ‘dinkool’ as fanciful words.

52 The conclusion set out in paragraph 51 above is not called in question by the applicant’s arguments.

53 First of all, regarding the argument that the relevant public will understand the component ‘din’ of the contested sign to be the English word meaning ‘noise’ or ‘tumult’, it is important to note that, while it is true that the relevant public must be regarded as having a basic knowledge of English, with the result that the vast majority are likely to understand simple words in that language (see, to that effect, judgment of 28 October 2009 in X-Technology R & D Swiss v OHIM — Ipko-Amcor (First-On-Skin), T‑273/08, EU:T:2009:418, paragraph 37 and the case-law cited), the fact remains that the word ‘din’ is not part of basic English language vocabulary. Therefore, that argument must be rejected.

54 Next, regarding the argument that ‘din’ cannot be understood as a reference to the intervener’s name except when it is used on its own, it should be noted that the applicant has neither explained the reasons underlying that assertion nor established that it is actually true. In particular, the applicant concedes that the earlier trade mark will be understood by the relevant public to be a reference to the intervener’s name. It also acknowledges, as has already been noted in paragraph 48 above, that German consumers will be led to break the word ‘dinkool’ down into its two elements ‘din’ and ‘kool’. That being so, and given that the applicant has not shown the reverse to be true, it must be held that German consumers — even very attentive ones — will perceive ‘din’ in the same way in both signs, and that conclusion does not stand in need of further refinement depending on whether ‘din’ is the initial component of the contested sign or the single word element of the earlier trade mark.

55 Lastly, as regards the applicant’s argument that a finding to the effect that the signs at issue are similar would mean that any sign reproducing the word element ‘din’, such as signs composed of the words ‘dingo’ or ‘dinosaur’, would be similar to the earlier trade mark, it is appropriate to reject that argument as ineffective ab initio because it does not establish the inaccuracy of a finding that the signs at issue are similar. Moreover and in any event, the analogy made by the applicant between the contested sign DINKOOL and the words ‘dingo’ and ‘dinosaur’ is irrelevant to the assessment of the similarity of the signs at issue, since, unlike the contested sign, which reproduces a word which has no meaning in German, the two words mentioned by the applicant correspond or allude to German words, namely ‘Dingo’ (dingo) and ‘Dinosaurier’ (dinosaur).

56 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (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).

57 In the present case, the Board of Appeal found in paragraph 38 of the contested decision that, owing to the visual and aural similarities between the signs at issue, there was a likelihood of confusion between those signs for the goods in Class 7 and the goods in Classes 9 and 11 which are identical or similar to the goods covered by the earlier trade mark.

58 That finding must be upheld in the light of the visual and aural similarities noted above (see, to that effect, judgment of 25 November 2003 in Oriental Kitchen v OHIM — Mou Dybfrost (KIAP MOU), T‑286/02, ECR, EU:T:2003:311, paragraph 45). The correctness of that finding is all the more evident in view of the fact that, for a part of the relevant public (as has been noted in paragraph 51 above), the signs at issue are also conceptually similar.

59 In the light of all of the foregoing, the present plea in law must be rejected.

60 The applicant claims, in essence, that the Board of Appeal infringed Article 8(4) of Regulation No 207/2009 by concluding in the contested decision, with regard to the goods in Classes 9 and 11 in respect of which registration had been sought and which were different from the goods covered by the earlier trade mark, that the use without due cause of the contested sign would take unfair advantage of the earlier sign DIN.

62 Article 8(4) of Regulation No 207/2009 provides that the proprietor of a sign used in the course of trade of more than mere local significance may oppose the registration of a Community trade mark, inter alia, where and to the extent that, pursuant to the law of the Member State governing the sign, the rights to that sign were acquired prior to the date of application for registration of the mark in question and the sign confers on him the right to prohibit the use of a subsequent trade mark (judgment of 10 July 2014 in Peek & Cloppenburg v OHIM, C‑325/13 P and C‑326/13 P, EU:C:2014:2059, paragraph 46).

63 The question of the extent to which a sign which is protected in a Member State confers the right to prohibit the use of a subsequent trade mark must be examined in the light of the applicable national law. In that regard, account must be taken, in particular, of the national legislation relied on and the judicial decisions delivered in the Member State concerned. On that basis, the opponent must establish that the sign in question falls within the scope of the law of the Member State relied on and that it allows use of a subsequent mark to be prohibited (see judgment in Peek & Cloppenburg v OHIM, paragraph 62 above, EU:C:2014:2059, paragraph 47 and the case-law cited).

64 In the present case, the question before the Board of Appeal was whether the business identifier DIN — the intervener’s name as listed in the register of companies, firms and associations and used in Germany in the field of the development of norms, standards and technical rules as a service to industry, the State and society as a whole — conferred on the intervener the right, pursuant to the applicable German law, to prohibit the use of the contested sign on the basis of Article 8(4)(b) of Regulation No 207/2009. The Board of Appeal examined that question in paragraphs 44 to 50 of the contested decision. In paragraph 51 of that decision, it upheld the opposition on the basis of Article 8(4) of Regulation No 207/2009.

65 First of all, the Board of Appeal observed, in paragraph 44 of the contested decision, that the earlier sign DIN had been used in Germany in activities with more than mere local significance prior to the date of application for registration of the contested sign. That statement is not challenged by the applicant.

66 Next, in paragraphs 45 and 46 of the contested decision, the Board of Appeal found that Paragraph 5(1) of the Markengesetz protected signs used in the course of trade as business identifiers, including as ‘business signs’, and that, pursuant to Paragraph 15(2) and (3) of the Markengesetz, the proprietor had the right to prohibit the unauthorised use of ‘business signs’ or any other similar signs where there is a likelihood of confusion or, if the earlier sign had acquired a reputation in Germany — whether or not there was a likelihood of confusion — where use would be detrimental to, or take unfair advantage of, the distinctiveness or reputation of the ‘business sign’. In paragraph 47 of the contested decision, the Board of Appeal found that the earlier sign DIN had a reputation in Germany for the services claimed, that is to say, for the development of norms, standards and technical rules as a service to industry, the State and society as a whole. The applicant does not dispute any of those findings.

67 Lastly, the Board of Appeal observed, in paragraph 49 of the contested decision, that the goods in Classes 9 and 11 in respect of which registration had been sought and which were different from the goods covered by the earlier trade mark were technical goods likely to be manufactured in accordance with agreed norms, another point not disputed by the applicant. According to the Board of Appeal, in view of the similarity of the signs at issue, the relevant public might believe that goods marketed under the contested sign DINKOOL were manufactured in compliance with the DIN norms established by the intervener, with the result that the use without due cause of the contested sign would take unfair advantage of the earlier sign DIN used in the course of trade in Germany (paragraph 50 of the contested decision).

68 By the present plea in law, the applicant contests only the assessments and findings set out in paragraph 50 of the contested decision, as summarised in paragraph 67 above.

69 First, the applicant submits, in essence, that the signs at issue are dissimilar, given that (i) ’din’ will not be understood as a reference to the intervener’s name unless it is used in isolation and (ii) the contested sign is composed of the combination of two English words, namely, ‘din’ and ‘cool’.

70 Since those arguments are essentially identical to those examined and rejected in paragraphs 53 and 54 above, they must be rejected on the same grounds as those set out in those paragraphs.

71 Secondly, the applicant submits that, where a product is certified by the intervener, clear reference is made to that certification through the identification of the intervener by its full name or acronym.

72 That argument is not capable of invalidating the points and findings set out in paragraph 50 of the contested decision as summarised in paragraph 67 above.

73 First, it is precisely because ‘din’ is included in the contested sign that the Board of Appeal found that the public might believe that the goods marketed under the sign DINKOOL were manufactured in compliance with the norms established by the intervener.

74 Secondly, in so far as the applicant’s argument as summarised in paragraph 71 above is to be interpreted as meaning that the contested sign cannot possibly, owing to the addition of the word ‘kool’ (read by the relevant public as the English adjective ‘cool’) to the word ‘din’, be understood as an indication that the product in question complies with the norms established by the intervener, it should be noted that that argument is in no way substantiated by actual evidence. In particular, the applicant has failed to explain whether — and, if so, how — it is clear from the contested sign DINKOOL that that sign has nothing to do with the norms established by the intervener, in order to demonstrate the truth of its claim that the relevant public could not possibly be led to believe that goods marketed under the contested sign were manufactured in compliance with the norms established by the intervener.

76 In the light of all the foregoing, the action must be dismissed in its entirety, without it being necessary for the Court to give a ruling on the admissibility of the applicant’s second head of claim, to the effect that the Court should register the mark applied for (see, to that effect, judgments of 22 May 2008 in NewSoft Technology v OHIM — Soft (Presto! Bizcard Reader), T‑205/06, EU:T:2008:163, paragraph 70, and 11 January 2013 in Kokomarina v OHIM — Euro Shoe Group (interdit de me gronder IDMG), T‑568/11, EU:T:2013:5, paragraph 54 and the case-law cited).

77 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. Since the applicant has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by OHIM in accordance with the form of order sought by that body. Since the intervener has not made any claim as to costs, it must be ordered to bear its own costs (see, to that effect, judgments of 5 March 1986 in Tezi Textiel v Commission, 59/84, ECR, EU:C:1986:102, paragraph 75, and 13 December 1990 in Nefarma v Commission, T‑133/89, ECR, EU:T:1990:82, paragraph 101).

2. Orders Infocit — Prestação de Serviços, Comércio Geral e Indústria, Lda to bear its own costs and to pay those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM).

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Infocit v OHMI - DIN (DINKOOL) (Judgment) [2015] EUECJ T-85/14 (10 February 2015) URL: http://www.bailii.org/eu/cases/EUECJ/2015/T8514.html Cite as: [2015] EUECJ T-85/14, ECLI:EU:T:2015:82, EU:T:2015:82

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