Fakro v EUIPO - Saint Gobain Cristalería (climaVera) (Judgment) [2017] EUECJ T-457/15 (15 June 2017)

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(EU trade mark — Opposition proceedings — Application for EU figurative mark climaVera — Earlier EU word mark CLIMAVER DECO — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

Fakro sp. z o.o., established in Nowy Sącz (Poland), represented by J. Radłowski, lawyer,

European Union Intellectual Property Office (EUIPO), represented by H. O’Neill, acting as Agent,

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

Saint Gobain Cristalería, SL, established in Madrid (Spain), represented by E. Bayo de Gispert, lawyer,

ACTION brought against the decision of the Second Board of Appeal of EUIPO of 12 May 2015 (Case R 2095/2014-2), relating to opposition proceedings between Saint Gobain Cristalería and Fakro,

composed of G. Berardis, President, D. Spielmann (Rapporteur) and Z. Csehi, Judges,

having regard to the application lodged at the Court Registry on 11 August 2015,

having regard to the response of EUIPO lodged at the Court Registry on 13 January 2016,

having regard to the response of the intervener lodged at the Court Registry on 28 December 2015,

having regard to the reassignment of the case to the Ninth Chamber and to a new Judge-Rapporteur,

having regard to the change in the composition of the Chambers of the General Court and the reassignment of the case to the Sixth Chamber,

having regard to the fact that no request for a hearing was submitted by the main parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure of the General Court,

1 On 28 January 2013, the applicant, Fakro sp. z o.o., filed an application for registration of an EU trade mark with EUIPO pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1).

3 The goods and services in respect of which registration was sought are in, inter alia, Classes 6, 19, 20, 24 and 37 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:

4 The EU trade mark application was published in Community Trade Marks Bulletin No 93/2013 of 21 May 2013.

5 On 20 August 2013, the intervener, Saint Gobain Cristalería, SL, 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 on the earlier EU word mark CLIMAVER DECO, filed on 27 March 2009, designating goods in Classes 11, 17 and 19 and corresponding, for each of those classes, to the following description:

– Class 11: ‘Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes’;

– Class 19: ‘Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal’.

7 The ground relied on in support of the opposition was that set out in Article 8(1)(b) of Regulation No 207/2009 in respect of all the goods covered by the earlier trade mark and the mark applied for.

8 By decision of 19 June 2014, the Opposition Division partly upheld the opposition, holding that there was a likelihood of confusion between the mark applied for and the earlier trade mark. Making reference to Communication No 2/12 of the President of EUIPO of 20 June 2012 concerning the use of class headings in lists of goods and services for Community trade mark applications and registrations (OJ OHIM 7/2012), the Opposition Division considered that the earlier trade mark was registered in respect of all the goods covered by Class Headings 11 and 19 of the Nice Classification. In particular, it upheld the opposition and refused the application for registration in respect of the ‘shutters of metal’ and the ‘jalousies of metal’ in Class 6 and the ‘jalousies, not of metal and not of textile’ in Class 19. It also refused the application for registration in respect of the ‘blinds and indoor curtains, not of metal’ in Class 20 and the ‘curtains of plastic or textile’ in Class 24. Lastly, the Opposition Division refused the application for registration in respect of the ‘assembly of jalousies, blinds, awnings and curtains’ in Class 37. It considered that there was a likelihood of confusion in respect of the goods and services held to be identical or similar to those covered by the earlier trade mark.

9 On 13 August 2014, the applicant filed a notice of appeal with EUIPO pursuant to Articles 58 to 64 of Regulation No 207/2009 against the Opposition Division’s decision.

10 By decision of 12 May 2015 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal on the ground that there was a likelihood of confusion in the case at hand. To that end, it considered that the goods and services were directed at both professionals and the general public and that the average consumer displayed a high level of attention when purchasing the goods and services in question. The Board of Appeal considered that the goods and services concerned were either identical or similar to the goods covered by the earlier trade mark. Regarding the comparison of the marks, it held that, visually, the elements ‘climavera’ and ‘climaver’ of the respective signs were the most dominant and eye-catching. Phonetically, it held that the pronunciation of the signs in question coincided with regard to the letters ‘c’, ‘l’, ‘i’, ‘m’, ‘a’, ‘v’, ‘e’, and ‘r’, which appeared in the same order in both signs. Lastly, conceptually, the Board of Appeal stated that the signs in question, despite some differences, could be perceived as similar by a part of the relevant public as they shared the element ‘clima’, understood by a substantial part of the relevant public as referring to the climate. The Board of Appeal concluded that there was a risk that the relevant public might be led to believe that the goods and services designated by the signs in question come from the same undertaking or from economically linked undertakings.

– annul the contested decision and refer the case back to EUIPO for further consideration;

13 In its single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, the applicant argues that the Board of Appeal erred in its assessment of the similarity of both the goods and the signs, which affected its conclusion that there was a likelihood of confusion in the present case.

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

16 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question 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 covered (see judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

17 The Board of Appeal held that the goods and services in question were directed at consumers in the area of home maintenance, improvement and renovation — both professionals and the general public, namely DIY amateurs. In addition, it held that it was necessary to take into consideration the level of attention of consumers forming part of the general public. In that regard, it considered that, for a large part of the goods in question, the average consumer would display a high level of attention when purchasing those goods, in view of — inter alia — the fact that they were goods that the average consumer did not purchase on a daily basis.

18 The applicant disputes that definition and argues that some of the services concerned, such as the installation of metal blinds on the outside of a window or the installation of electric blinds, require a significant level of professionalism. Accordingly, it is necessary in the present case to consider that the goods and services in question are directed, not at DIY amateurs, but at professionals, who thus display a higher level of attention when purchasing those goods or services.

19 EUIPO and the intervener dispute the applicant’s arguments. They contend that the Board of Appeal was fully entitled to hold that the relevant public comprises both end users and professionals.

20 According to case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods or services concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).

21 In the present case, firstly, it should be stated that, even should the purchase of some of the goods in question require professional expertise, it is not inconceivable that end consumers would be involved in the process of acquiring those goods. As was correctly observed by the intervener, the end user of the goods in question may always hire a professional to install those goods once he has examined a large range of goods and services pertaining to shutters, jalousies or blinds and chosen the product or service that best meets his needs.

22 It should also be noted that the installation of some of the goods in question is not solely the preserve of professionals, in so far as a professional level of expertise is not always required. Even assuming that, as is suggested by the applicant, the installation of metal blinds on the outside of a window or the installation of electric blinds requires the involvement of a professional, that would not necessarily be the case for other products, such as the non-metallic blinds and indoor curtains in Class 20 or the curtains of plastic or textile in Class 24 which do not seem very difficult to install.

23 Secondly, it should be noted that the applicant itself accepts that purchasers of the goods concerned may also, albeit exceptionally, be DIY amateurs. It is not therefore inconceivable that the goods concerned may be purchased and installed not only by professionals but also by skilled end users, as is conceded by the applicant.

24 Accordingly, the Board of Appeal was correct in considering that the goods and services in question were directed at both professionals in the area of home maintenance, improvement and renovation and the general public, namely DIY amateurs. It must be found that the average consumer’s level of attention in that situation is high. Moreover, as was correctly observed in the contested decision, which in that regard is not contested by the applicant, the relevant territory in the present case is that of the European Union.

26 The applicant submits that the Board of Appeal incorrectly interpreted Communication No 2/12 by applying a method of defining the goods and services covered by each class which favoured the intervener. In particular, the applicant submits that, according to point VIII(2) of that communication, EUIPO should have used a literal approach in respect of the goods or services included in the alphabetical list of the classes concerned when comparing the goods covered.

‘As regards Community trade marks registered before the entry into force of the present Communication which use all the general indications listed in the class heading of a particular class, the Office considers that the intention of the applicant, in view of the contents of the previous Communication [No] 4/03, was to cover all the goods or services included in the alphabetical list of that class in the edition in force at the time when the filing was made.

The above is without prejudice to the application of Article 50 [of Regulation No 207/2009].’

‘In the case of Community trade mark applications or registrations which, according to the above, are deemed to cover all the goods or services included in the alphabetical list of a certain class or which cover only some of those goods or services, a literal approach, which seeks to give the terms used in those indications their natural and usual meaning, will be consistently used in all proceedings before the Office and, in particular:

2. In examining the existence of an identity or similarity when comparing goods/services in opposition or cancellation proceedings, only the goods or services deemed to be covered will be considered.’

29 It is apparent from point V of Communication No 2/12, adopted following the judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361), that, as regards EU trade marks registered before 21 June 2012, the use of all the general indications listed in the class heading of a particular class shows the trade mark applicant’s intention to cover, by its application, all the goods or services included in the alphabetical list relating to that class. That communication has already been found to be compatible with the principles laid down by the Court in its judgment of 19 June 2012, Chartered Institute of Patent Attorneys (C‑307/10, EU:C:2012:361) (see judgment of 29 April 2015, Chair Entertainment Group v OHIM — Libelle (SHADOW COMPLEX), T‑717/13, not published, EU:T:2015:242, paragraph 37), which, moreover, is not disputed by the applicant.

30 In the present case, the earlier trade mark had been registered by EUIPO on 15 October 2009. Accordingly, the Board of Appeal was fully entitled to consider, when confirming the Opposition Division’s decision, that the trade mark applicant’s intention was to cover all the goods included in the alphabetical list of Classes 11 and 19 of the Nice Classification in force at the time of filing and, in doing so, was acting in accordance with Communication No 2/12.

31 The applicant’s argument, namely that the Board of Appeal took a much broader view of the similarity of the goods by relying on factors such as the nature, purpose, substitutability, distribution channels or complementary nature of the goods under comparison, does not undermine that conclusion.

32 That argument concerns the comparison of the goods and services in question, whereas Communication No 2/12 merely establishes the basis for determining the specific goods designated by the earlier trade mark. In particular, that communication contains no instructions concerning the implementation of the relevant criteria for comparing the goods and services included in the classes in question, and hence contains no instructions concerning the assessment of the likelihood of confusion between the two signs at issue, as the applicant is essentially suggesting. Rather, it indicates the way in which the class headings in the lists of goods and services must be used in order to identify all or some of the goods or services included in the alphabetical list of each class. The Board of Appeal was therefore correct in accepting that, as regards the earlier trade mark, the ‘shutters, not of metal’ and the ‘jalousies, not of metal’ were covered by Class 19.

33 The applicant claims that the contested decision was not based on factors relevant for assessing the similarity of the goods and services in question. In particular, the Board of Appeal relegated all the goods concerned in the present case to the role of window accessories. The applicant complains that the Board of Appeal did not take sufficient account of the differences between indoor and outdoor blinds and curtains. It states that the Board of Appeal did not take account of the fundamental difference between outdoor metal blinds and other blinds, namely that the main purpose of the former is to perform an anti-burglary function. It refers in particular to Class 19, covered by the earlier trade mark, which does not include the metal jalousies in Class 6 or the assembly of outdoor metal jalousies in Class 37. The applicant adds that the Board of Appeal did not take sufficient account of the fact that the earlier trade mark did not designate any such anti-burglary service.

34 EUIPO and the intervener contend that the arguments relied on by the applicant in order to establish differences between the goods and services concerned are flawed.

35 It should be borne in mind that, in the assessment of the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).

36 In addition, goods or services which are complementary are those where there is a close connection between them, in the sense that one is indispensable or important for the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking. By definition, complementary goods or services must be capable of being used together, so that goods and services directed at different publics cannot be complementary (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraphs 57 and 58 and the case-law cited).

37 In the present case, the applicant’s arguments intended to distinguish the goods covered by the earlier trade mark from those covered by the mark applied for cannot be accepted.

38 First of all, regarding the goods in Class 19 covered by the mark applied for, namely ‘jalousies, not of metal and not of textile’, it must be pointed out that, as the Board of Appeal correctly considered, those goods fall under the category of the ‘jalousies, not of metal’ included in the alphabetical list of Class 19 covered by the earlier trade mark.

39 In addition, regarding the goods in Classes 6, 20 and 24 covered by the mark applied for, it must be found that they are similar to some of the goods included in the alphabetical list of Class 19 covered by the earlier trade mark. Thus, the ‘shutters of metal, jalousies of metal’ in Class 6 covered by the mark applied for are similar to the ‘shutters, not of metal’ and ‘jalousies, not of metal’ included in the alphabetical list of Class 19 as regards the earlier trade mark. As the Board of Appeal was fully entitled to state, both goods have the same nature and serve the same purpose, in so far as they may be used ‘for a variety of reasons, such as to control the amount of sunlight and air that enters a room, to provide privacy or security, to protect against weather or unwanted intrusion or damage, or also to enhance the aesthetics of a room or a building’.

40 The same is true of the goods in Classes 20 and 24 covered by the mark applied for, namely ‘blinds and indoor curtains, not of metal’ and ‘curtains of plastic or textile’, respectively, compared with the ‘[outdoor] blinds, not of metal and not of textile’ included in the alphabetical list of Class 19 covered by the earlier trade mark. As the Board of Appeal correctly noted, ‘all those goods are used as window accessories to provide privacy and to protect a place from sun, noise, or prying eyes’. They are ‘goods used for the same purposes, which target the same public and which could moreover have the same origin, the same points of sale and the same distribution channels’. In addition, ‘they are complementary and may be in competition with each other’.

41 In that regard, the applicant argues that the goods referred to above are not similar, relying mainly on the fact that, unlike non-metallic shutters and jalousies, metal shutters and jalousies perform an anti-break-in function, which constitutes a fundamental difference. However, that argument cannot be accepted. Even assuming that the purpose of the metal shutters and jalousies in Class 6 covered by the mark applied for is to provide security for a room or a building by discouraging breaking and entering, they also perform other functions at the same time. As the Board of Appeal observed, the multifunctional aspects of those goods include controlling the amount of sunlight and air that enters a room and providing privacy for the occupant.

42 It must also be pointed out that the applicant itself does not dispute that shutters and jalousies (whether metal or not) are multifunctional, in so far as it concedes that those goods ‘primarily perform an anti-burglary function’. Thus, by using the expression ‘primarily’, the applicant does not rule out the possibility that the goods referred to above may fulfil other functions apart from being used as anti-theft devices.

43 In the light of the foregoing, the overlap in terms of the nature and purpose of the goods in Classes 6, 20 and 24 designated by the mark applied for and the ‘shutters, not of metal’ and ‘jalousies, not of metal’ included in the alphabetical list of Class 19 covered by the earlier trade mark is sufficient to make them similar.

44 Moreover, regarding the services in Class 37 covered by the mark applied for, namely ‘assembly of jalousies, blinds, awnings and curtains’, there is a link of complementarity, within the meaning of the case-law cited in paragraph 36 above, between those services and the ‘jalousies, not of metal and blinds [outdoor], not of metal and not of textile’ covered by the earlier trade mark. As stated by EUIPO, the goods and services concerned target the same public and may be supplied via the same distribution channels, in so far as undertakings that assemble jalousies and blinds also, as a general rule, sell or distribute those same goods.

45 Lastly, the applicant complains that the Board of Appeal did not take account of the fact that the intervener did not provide services assembling jalousies, blinds, awnings and curtains. It adds that, if that were the case, the sale and installation of the goods concerned would require the involvement of a professional, which would also mean there could be no likelihood of confusion as regards the marks concerned.

46 Those arguments cannot succeed. It is apparent from case-law that the comparison of the goods required by Article 8(1)(b) of Regulation No 207/2009 must relate to the description of the goods covered by the earlier mark and not to the goods for which the trade mark is actually used unless, following a request for proof of genuine use of the earlier mark, such proof is furnished only in respect of some of the goods or services for which the earlier mark is registered (judgment of 3 June 2015, Pensa Pharma v OHIM — Ferring and Farmaceutisk Laboratorium Ferring (PENSA PHARMA and pensa), T‑544/12 and T‑546/12, not published, EU:T:2015:355, paragraph 128). As regards the argument relating to how the marks concerned are perceived by a professional, it is irrelevant, given that it does not relate to the comparison of the goods and services in question but to the likelihood of confusion between the earlier trade mark and the mark applied for.

47 It therefore follows from all of the foregoing that the goods and services in Classes 6, 19, 20, 24 and 37 covered by the mark applied for are either identical or similar to the goods in Class 19 covered by the earlier trade mark.

48 The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, 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 this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).

49 According to case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30, and of 10 September 2008, Boston Scientific v OHIM — Terumo (CAPIO), T‑325/06, not published, EU:T:2008:338, paragraph 89).

50 Moreover, 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 (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, 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 (judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 42, and of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, with the result that all the other components are negligible in the overall impression created by that mark (judgment of 20 September 2007, Nestlé v OHIM, C‑193/06 P, not published, EU:C:2007:539, paragraph 43).

51 The Board of Appeal considered that the signs at issue were visually similar, taking account, inter alia, of the fact that the dominant element of the earlier trade mark was contained in the contested sign.

52 The applicant submits that the Board of Appeal failed to take account of several factors visually distinguishing the two signs at issue. First, the Board of Appeal did not take sufficient account of the fact that, in the mark applied for, the words ‘clima’ and ‘vera’ are clearly separated. Secondly, the term ‘clima’ is not distinctive. Thirdly, the earlier trade mark contained the term ‘deco’, which is strongly distinctive. Moreover, that term is an integral part of the earlier trade mark and, accordingly, the Board of Appeal should have taken greater account of both the element ‘climaver’ and the element ‘deco’ when comparing the signs at issue.

54 First of all, it should be borne in mind that nothing prevents a determination as to whether there is any visual similarity between a word mark and a figurative mark, since the two types of mark have a graphic form capable of creating a visual impression (see judgment of 4 May 2005, Chum v OHIM — Star TV (STAR TV), T‑359/02, EU:T:2005:156, paragraph 43 and the case-law cited).

55 Furthermore, the fact that a mark consists exclusively of the earlier mark, to which another word element has been added, is an indication that the two trade marks are similar (see, to that effect, judgments of 12 November 2008, ecoblue v OHIM — Banco Bilbao Vizcaya Argentaria (Ecoblue), T‑281/07, not published, EU:T:2008:489, paragraph 28, and of 28 October 2009, X-Technology R & D Swiss v OHIM — Ipko-Amcor (First-On-Skin), T‑273/08, not published, EU:T:2009:418, paragraph 31).

56 In the present case, the Board of Appeal was fully entitled to conclude that the signs at issue were visually similar.

57 In that regard, in the first place, it is common ground that the signs at issue share the word element ‘climaver’. In the light of the case-law recalled in paragraph 55 above, that shared element is thus an indication that the marks at issue are visually similar. That conclusion is all the more compelling since the element ‘climaver’ appears at the beginning of the mark applied for. According to case-law, consumers normally attach more importance to the beginnings of words (judgments of 17 March 2004, El Corte Inglés v OHIM — González Cabello and Iberia Líneas Aéreas de España (MUNDICOR), T‑183/02 and T‑184/02, EU:T:2004:79, paragraph 81, and of 7 February 2013, AMC-Representações Têxteis v OHIM — MIP Metro (METRO KIDS COMPANY), T‑50/12, not published, EU:T:2013:68, paragraph 40).

58 The applicant submits that the term ‘clima’ shared by the two signs at issue is in no way distinctive and, accordingly, cannot be taken into consideration in the assessment of the similarity between the two signs.

59 In that regard, it must be pointed out that, as was noted by the Board of Appeal, a significant part of the relevant public will perceive the word element ‘clima’ as a reference to the climate. That meaning will be perceived in English by reference to the word ‘climate’ which designates, inter alia, the typical meteorological conditions of a given country or region. Moreover, in the majority of other relevant languages, such as German, Spanish, French, Italian and Portuguese, which have a word that is identical or very similar to the word element ‘clima’, the perception of that term will be the same. Since the element ‘clima’ can thus refer to regulating the temperature of a room or a building, it must be considered by a large part of the relevant public as directly alluding to — and not, as was held by the Board of Appeal, as laudatory of — the goods and services concerned. Consequently, the word element ‘clima’ in itself is weakly distinctive.

60 Nevertheless, the weak distinctive character of an element of a composite trade mark does not always imply that that element cannot constitute a dominant element. Because, in particular, of its position in the sign or its size, it may make an impression on consumers and be remembered by them (see judgment of 13 December 2007, Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, EU:T:2007:387, paragraph 54 and the case-law cited). That is the situation in the present case, especially since the element ‘clima’ is part of the term ‘climavera’ in the mark applied for and the term ‘climaver’ in the earlier trade mark, that is, terms which, visually, occupy a dominant position in the signs at issue.

61 In the second place, the points of dissimilarity between the signs at issue are not sufficient to dispel the relevant consumer’s impression that those signs are visually similar. In that regard, it should be noted that, concerning the figurative elements of the mark applied for, namely the graphical representation of a sun and vertical dotted lines, which may resemble a blind or a curtain, the Board of Appeal was fully entitled to consider that their impact was limited. Those graphical elements are purely decorative and do not alter the dominant character of the term ‘climavera’ within the mark applied for.

62 In that regard, it should be borne in mind that, where a mark is composed of word and figurative elements, the former are, in principle, more distinctive than the latter, because the average consumer will more readily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (judgment of 10 March 2016, LG Developpement v OHIM — Bayerische Motoren Werke (MINICARGO), T‑160/15, not published, EU:T:2016:137, paragraph 43). This is especially true in the present case, in so far as the word element, owing to its length, occupies more space than the figurative element in the mark applied for.

63 Furthermore, contrary to the applicant’s assertions, the way in which the signs at issue are perceived will not be altered by the fact that the two elements of the mark applied for, namely ‘clima’ and ‘vera’, are distinguished by their colour and the capital letter ‘V’. As the Board of Appeal emphasised, this is a moderate stylisation of the word element of the mark applied for, which fails to counter the fact that the first eight letters of the only word element of the contested sign reproduce the first eight letters of the word element of the earlier trade mark in their entirety.

64 The same can also be said as regards the applicant’s argument that the Board of Appeal failed to take sufficient account of the strongly distinctive character of the word element ‘deco’ in the earlier trade mark. Indeed, as the Board of Appeal correctly considered, the element ‘deco’ will be associated by a significant part of the relevant public with the theme of ‘decoration’. Thus, the distinctive character of the term ‘deco’, relied on by the applicant, is weakened because the goods and services covered by the earlier trade mark are largely connected with window furnishing and thus perform, inter alia, a decorative function. Accordingly, the term ‘deco’ is rather descriptive of the goods covered by the signs at issue and does not constitute a dominant element for the purposes of assessing their visual similarity.

65 It is true that the element ‘deco’ is a non-negligible element differentiating between the signs at issue. Nevertheless, that difference is insignificant in relation to the length of the shared element ‘climaver’, which comprises eight letters, and, as has already been stated, the important position occupied by the latter element in the signs in question and, accordingly, is insignificant in the context of the overall visual impression given to consumers by the length and position of that shared element (judgment of 14 September 2016, Lotte v EUIPO — Kuchenmeister (KOALA LAND), T‑479/15, not published, EU:T:2016:472, paragraph 47).

66 The Board of Appeal was therefore fully entitled to consider that the two signs at issue were visually similar.

67 The Board of Appeal considered that, taken as a whole, the signs at issue were phonetically similar.

68 The applicant claims that the signs at issue are dissimilar in so far as the words ‘clima’ and ‘vera’ of the mark applied for must be pronounced separately. It asserts that two words are pronounced differently from one.

70 It must be found that there is a high degree of phonetic similarity between the marks at issue. The word element ‘climaver’ of the earlier trade mark is almost identical to the word element of the mark applied for. The only difference between the two terms is the vowel ‘a’ at the end of the word element of the contested sign. In that regard, it should be borne in mind that, as has been mentioned in paragraph 57 above, consumers’ attention is normally focused primarily on the beginnings of words. Consequently, in view of the fact that the three shared syllables are at the beginning of the respective word elements, the phonetic similarity between the signs at issue is strengthened. That is especially true since, as has been observed in paragraphs 61 and 64 above, and contrary to the applicant’s assertions, both the figurative element of the contested sign and the term ‘deco’ at the end of the earlier trade mark occupy a secondary position in their respective signs.

71 The applicant’s argument that EUIPO failed to take sufficient account of the fact that, in the contested trade mark, the shared letters form part of two separate words ‘clima’ and ‘vera’ which are distinguished by their colour and the capital letter ‘V’ cannot be accepted. First of all, the term ‘climavera’ appears as a single word without any space between the words ‘clima’ and ‘vera’ and is therefore pronounced without a break. Next, its moderate stylisation, already noted in paragraph 63 above, does not permit the conclusion that the relevant public will tend to break the term ‘climavera’ down into two phonetically separate elements.

72 It follows that the Board of Appeal was correct in finding that the signs in question were phonetically similar.

73 The Board of Appeal concluded that the signs at issue were conceptually similar to a certain extent for the part of the public that associates the term ‘clima’ with the climate. As regards the remainder of the public, which does not understand that term, the signs at issue do not have any concept in common.

74 The applicant submits that there is no conceptual similarity between the signs at issue. Regarding the term ‘clima’, the shared element in the word part of the two signs, it submits that, owing to its descriptive character, it should be excluded altogether from the assessment of similarity. Furthermore, it considers that the Board of Appeal should have taken greater account of the word element ‘deco’ of the earlier trade mark, which would have to be associated by consumers with the word ‘vero’, which means ‘true’ or ‘actual’ in Italian.

76 Concerning the conceptual similarity, it should first of all be observed that, 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 word sign, he will break it down into word elements which, for him, suggest a concrete meaning or which resemble words known to him (see, to that effect, judgment of 13 February 2007, RESPICUR, T‑256/04, EU:T:2007:46, paragraph 57 and the case-law cited).

77 In the present case, it is true that, as noted by the applicant, the term ‘deco’ which is part of the word element of the earlier trade mark alone, while being descriptive, provides a point of conceptual distinction between the marks concerned, since it associates the earlier trade mark with the theme of ‘decoration’.

78 However, as has been noted in paragraph 59 above, a large part of the relevant public will recognise the meaning of the term ‘clima’ which forms part of the word element of the signs at issue. The graphical representation of the sun shining partially strengthens the association of the word element ‘clima’ with the concept of climate. Moreover, the elements ‘vera’ and ‘ver’ in the mark applied for and the earlier trade mark, respectively, may, to a certain extent, be associated with the word ‘vero’ in Italian and thus be linked conceptually with the term ‘clima’ in order to mean the real, correct or desired temperature attained through the use of the goods concerned. Accordingly, as the Board of Appeal stated, it must be considered that, for a part of the public, the signs in question will be conceptually similar.

79 In addition, it should be noted, as the Board of Appeal did, that the remaining public will consider the word elements of the marks concerned as a whole and will most likely perceive the terms ‘climavera’ and ‘climaver’ as invented words. Consequently, for that part of the relevant public, the signs concerned will have no concept in common and will thus be conceptually neutral.

80 It follows from the foregoing that the Board of Appeal did not err in considering that the marks at issue either are conceptually similar or have no concept in common.

81 The Board of Appeal concluded that there was a likelihood of confusion between the signs at issue.

82 The applicant emphasises the lack of similarity between the earlier trade mark and the mark applied for and submits that there is no likelihood of confusion.

84 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 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 29 September 1998, Canon, C‑39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).

85 In the present case, the Board of Appeal was fully entitled to conclude, in paragraph 76 of the contested decision, that the earlier trade mark as a whole had no meaning in relation to all the goods and services in question, and therefore had a normal distinctive character, even though the terms ‘clima’ and ‘deco’, taken individually, had a weak distinctive character (see paragraphs 59 and 64 above). In that regard, it should be pointed out that, as has been noted in paragraph 79 above, a part of the relevant public would perceive the term ‘climaver’ of the earlier trade mark as an invented word.

86 In any event, it is sufficient to state in that regard that the finding of a weak distinctive character for the earlier trade mark would not prevent a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 13 December 2007, PAGESJAUNES.COM, T‑134/06, EU:T:2007:387, paragraph 70 and the case-law cited).

87 In the present case, the Board of Appeal correctly concluded, first, that the goods covered by the marks at issue were identical or similar (see paragraph 47 above) and, second, that the two marks were visually (see paragraph 66 above) and phonetically (see paragraph 72 above) similar and were either conceptually similar or conceptually neutral (see paragraph 80 above).

88 Consequently, the Board of Appeal was fully entitled to conclude that there was a likelihood of confusion, even in the event of the average consumer displaying a high level of attention in the present case (see paragraph 24 above).

89 Having regard to all of the foregoing, as the single plea in law relied on by the applicant is unfounded, the action must be dismissed in its entirety.

90 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. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO and the intervener.

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> Fakro v EUIPO - Saint Gobain Cristalería (climaVera) (Judgment) [2017] EUECJ T-457/15 (15 June 2017) URL: http://www.bailii.org/eu/cases/EUECJ/2017/T45715.html Cite as: ECLI:EU:T:2017:391, EU:T:2017:391, [2017] EUECJ T-457/15

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