ARTICLES AND PUBLICATIONS

T-11-15 SUEDTIROL

JUDGMENT OF THE GENERAL COURT (Second Chamber)

15 July 2015 (*)

(Community trade mark — Opposition proceedings — Application for Community word mark HAPPY TIME — Earlier international word mark HAPPY HOURS — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)

In Case T‑352/14,

The Smiley Company SPRL, established in Brussels (Belgium), represented by I.-M. Helbig, P. Hansmersmann and S. Rengshausen, lawyers,

applicant,

v

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

defendant,

the other party to the proceedings before the Board of Appeal of OHIM being

The Swatch Group Management Services AG, established in Biel (Switzerland),

ACTION brought against the decision of the First Board of Appeal of OHIM of 6 February 2014 (Case R 1497/2013-1), relating to opposition proceedings between The Swatch Group Management Services AG and The Smiley Company SPRL,

THE GENERAL COURT (Second Chamber),

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

Registrar: I. Dragan, Administrator,

having regard to the application lodged at the Court Registry on 21 May 2014,

having regard to the response lodged at the Court Registry on 1 October 2014,

further to the hearing on 10 March 2015,

gives the following

Judgment

Background to the dispute

1 On 7 July 2011 the applicant, The Smiley Company SPRL, 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 HAPPY TIME.

3 The goods and services in respect of which registration was sought are in, inter alia, Classes 14 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: ‘Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments’;

– Class 35: ‘Advertising; business management; business administration; office functions’.

4 On 20 September 2011, The Swatch Group Management Services AG, the other party to the proceedings, filed a notice of opposition to registration of the mark applied for in respect of all the goods and services referred to in paragraph 3 above.

5 The opposition was based on the earlier international word mark HAPPY HOURS, registered on 25 April 2007 under number 923074, having effect in the European Union and designating services in Classes 35 and 37 corresponding, respectively, to the following description:

– Class 35: ‘Retailing of timepieces and jewellery; retailing of timepieces and jewellery via global computer networks (Internet)’;

– Class 37: ‘Repair and maintenance of timepieces and jewellery’.

6 The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009.

7 On 14 March 2013, OHIM sent the applicant a communication in which it noted that the application for registration covered the general indications of the class headings 14 and 35. In that communication, OHIM also drew the applicant’s attention to the fact that it considered that the reference to all the general indications of the class headings showed the intention to cover all of the goods or services included in the alphabetical lists in Classes 14 and 35 of the Nice Classification in force on the date on which the application had been lodged. Lastly, OHIM requested the applicant, in the event that it did not intend to claim protection for all of the goods or services included in the alphabetical lists at issue, to specify which goods and services it intended the application to cover. The applicant did not reply to that communication.

8 By decision of 31 May 2013, the Opposition Division partially upheld the opposition with respect to the following goods and services:

– Class 14: ‘Goods in precious metals or coated therewith, not included in other classes; jewellery; horological and chronometric instruments’;

– Class 35 : ‘Auctioneering’.

9 The applicant brought an appeal against the decision of the Opposition Division.

10 By decision of 6 February 2014 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal.

11 First of all, the Board of Appeal stated that, for the purposes of assessing the likelihood of confusion, it would consider ‘the natural meaning of the goods and services specified in the application’ for registration (paragraph 31 of the contested decision). Thus, the Board of Appeal did not rule on the likelihood of confusion concerning, in particular, auctioneering services and it pointed out that neither party had presented any arguments in that respect.

12 On the other hand, the Board of Appeal did rule on the likelihood of confusion in respect of the goods in Class 14 mentioned in paragraph 8 above.

13 In that regard, the Board of Appeal found that those goods and the goods to which the opponent’s retail services relate were identical, and that those goods therefore displayed similarities with those services, which, moreover, were generally offered in the same places as those in which those goods were offered for sale (paragraphs 44 to 47 of the contested decision).

14 The Board of Appeal also found that there was a low degree of visual and phonetic similarity, but also a conceptual identity, between the two signs at issue (paragraphs 50 to 52 of the contested decision). It rejected the applicant’s argument that the distinctive character of the earlier mark was weak (paragraphs 53 of the contested decision). Lastly, the Board of Appeal concluded that there was a likelihood of confusion between the two marks at issue with respect to the goods in Class 14 mentioned in paragraph 8 above (paragraph 57 of the contested decision). As a consequence, it dismissed the appeal (paragraph 58 of the contested decision).

Forms of order sought

15 The applicant claims that the Court should:

–  annul the contested decision;

–  reject the opposition;

– order OHIM to pay the costs incurred by the applicant in the proceedings before the Court and order the other party to the proceedings to pay the costs incurred before the Board of Appeal.

16 OHIM contends that the Court should:

– dismiss the action;

– order the applicant to pay the costs.

Law

17 The applicant claims that the Board of Appeal misinterpreted Article 8(1)(b) of Regulation No 207/2009 in concluding that there is a likelihood of confusion between the two signs at issue.

18 OHIM contends that the plea in law must be rejected.

19 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 is not to be registered if, because of its identity with, or similarity to, that 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.

20 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 same line of case-law, the likelihood of confusion must be assessed globally according to the relevant public’s perception of the signs and the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverley Hills (GIORGIO BEVERLEY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).

21 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.

 The relevant public

22 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods 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 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and the case-law cited).

23 In the present case, the Board of Appeal held, correctly and without being challenged on that point by the applicant, that, with regard to the goods in Class 14 mentioned in paragraph 8 above, the relevant territory was that of the EU Member States and the relevant public was primarily the general public, which is reasonably well informed and reasonably observant and circumspect (paragraph 33 of the contested decision).

 The comparison of the goods

24 According to settled case-law, in order to assess the similarity of the goods or services at issue, all the relevant factors of the relationship between 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 in El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, ECR, EU:T:2007:219, paragraph 37 and the case-law cited).

25 Goods or services are complementary 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 (see judgment of 22 January 2009 in Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, ECR, EU:T:2009:14, paragraph 57 and the case-law cited).

26 As regards the similarity between goods and retail services, it must be borne in mind that there is a similarity between goods and the retail services which affect those goods (see judgment of 16 October 2013 in El Corte Inglés v OHIM — Sohawon (fRee YOUR STYLe.), T‑282/12, EU:T:2013:533, paragraph 37 and the case-law cited).

27 In the present case, as is clear from paragraphs 44 to 47 of the contested decision, the relevant subjects of comparison are, on the one hand, the retail services provided in relation to timepieces and jewellery included in Class 35 and, on the other hand, the goods in Class 14 mentioned in paragraph 8 above, namely: ‘Goods in precious metals or coated therewith, not included in other classes; jewellery; horological and chronometric instruments’.

28 The Board of Appeal was right to find that the goods that were the subject of the retail services covered by the earlier mark were identical to the goods covered by the mark applied for (paragraph 44 of the contested decision). At the least, it was entitled to conclude that the goods were very similar.

29 The Board of Appeal also rightly found that the services at issue were generally offered in the same places as those in which the goods covered by the mark applied for were offered for sale (paragraph 47 of the contested decision).

30 It follows from the foregoing that the Board of Appeal was fully entitled to conclude, in paragraph 47 of the contested decision, that the goods in Class 14 covered by the mark applied for, as mentioned in paragraph 8 above, and the services in Class 35 covered by the earlier mark displayed some similarities (judgments of 24 September 2008 in Oakley v OHIM — Venticinque (O STORE), T‑116/06, ECR, EU:T:2008:399, paragraphs 52 to 58, and fRee YOUR STYLe., cited in paragraph 26 above, EU:T:2013:533, paragraphs 37 to 39).

31 That conclusion is not called into question by the applicant’s submission, which is unproven, that it is only in very specific cases that the relevant public would be likely to believe that the same undertaking is responsible for the quality of both the services provided and the goods sold.

32 Even if the consumers concerned believed that the goods sold by a retailer were generally made by third-party undertakings and not by the retailer, it nevertheless remains the case that those consumers might believe that liability for the manufacture of the goods sold by that retailer falls on that retailer where, first, there is a similarity between the mark covering those goods and the retailer’s mark and, second, the latter mark covers retail services relating to the same goods (see the case-law cited in paragraphs 26 and 30 of the present judgment).

33 Moreover, the applicant’s argument that there is no similarity between the services of the repair and maintenance of timepieces and jewellery in Class 37 which are covered by the earlier mark and the goods in Class 14 covered by the mark applied for is inoperative, given that, as the applicant admitted at the hearing, in the contested decision the Board of Appeal did not rely on such a similarity to dismiss the appeal against the decision of the Opposition Division, but solely on the similarity between the services of retailing timepieces and jewellery in Class 35 which are covered by the earlier mark and the goods covered by the mark applied for which are mentioned in paragraph 8 above (paragraphs 40 to 47 of the contested decision).

 The comparison of the signs

34 According to settled case-law, the global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the marks at issue, be based on the overall impression given by the marks, 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 that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (judgments of 11 November 1997 in SABEL, C‑251/95, ECR, EU:C:1997:528, paragraph 23, and 17 October 2013 in Isdin v Bial-Portela, C‑597/12 P, ECR, EU:C:2013:672, paragraph 19).

The visual and phonetic similarities

35 It should be noted that both of the word marks at issue are made up of two words, that the first word in each of the two signs, the term ‘happy’, is common to them both, but that the second word in each of the two signs is different. Furthermore, the overall length of the two signs is very similar, since the number of syllables they contain is identical and the number of letters they contain is almost identical.

36 In the light of the foregoing and particularly taking into account that the consumer generally pays greater attention to the beginning of a mark than to the end and that the word placed at the beginning of the sign is likely to have a greater impact than the rest of the sign (judgment of 11 May 2010 in Wessang v OHIM — Greinwald (star foods), T‑492/08, EU:T:2010:186, paragraph 48), it must be held that the Board of Appeal was fully entitled to conclude, on the basis of the overall impression created by the signs at issue, that there is a certain degree of visual similarity and a low degree of phonetic similarity between them.

The conceptual similarity

37 The Board of Appeal correctly stated that both of the signs at issue refer to a state of being happy over an unspecified period. It was also correct in stating that the earlier mark did not contain a promotional message or a reference to special discounts (paragraph 52 of the contested decision). The retail services covered by that mark relate to timepieces and jewellery and have no connection to establishments serving beverages. It has not been established that, in connection with the sale of those goods, the expression ‘happy hours’ carries a promotional connotation for all of the relevant public.

38 The Board of Appeal was therefore right to find that the signs at issue have an identical conceptual content. At the least, it was entitled to conclude that there is a very strong conceptual similarity between those signs.

39 It should also be noted that the words ‘happy’, ‘hours’ and ‘time’ are part of the basic English vocabulary which is known to the relevant public (see, to that effect, judgment of 12 November 2008 inecoblue OHIM — Banco Bilbao Vizcaya Argentaria (Ecoblue), T‑281/07, EU:T:2008:489, paragraph 30).

40 In any event, those word elements have a specific meaning for the average English-speaking consumer.

41 It does not follow from Article 8(1)(b) of Regulation No 207/2009 that, for a Community trade mark to be refused registration under that provision, the likelihood of confusion must exist in all Member States and in all linguistic areas of the Union. The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community trade mark which would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the Community (judgment of 18 September 2008 in Armacell OHIM, C‑514/06 P, EU:C:2008:511, paragraphs 56 and 57).

42 The Board of Appeal was therefore entitled to take into account the meaning of the words ‘happy’, ‘hours’ and ‘time’ when comparing the two signs at issue.

43 It follows from the foregoing that, as regards the comparison of the signs, the Board of Appeal was fully entitled to conclude that there was an overall similarity between the signs at issue (paragraph 54 of the contested decision).

44 In that regard, it is necessary to reject the applicant’s argument that the term ‘happy’ should not be taken into account — or should be taken into account only to a small extent — for the purposes of the visual, phonetic and conceptual comparisons. It has not been established that the terms ‘hours’ and ‘time’ should be regarded as dominating, by themselves, the images of those marks which the relevant public keeps in mind, with the result that the other component of the two marks, the term ‘happy’, is negligible within the overall impression created by them (judgment of 25 April 2013 inMetropolis Inmobiliarias y Restauraciones OHIM — MIP Metro (METROINVEST), T‑284/11, EU:T:2013:218, paragraph 50).

The global assessment of the likelihood of confusion

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

46 In the present case, given that the goods and services at issue display some similarities and that there is an overall similarity between the marks at issue owing to their conceptual identity or, at the least, their very strong conceptual similarity, and the fact that there is a certain visual and phonetic similarity between them, it must be held that the Board of Appeal did not err in finding that there was a likelihood of confusion.

47 That conclusion is not called into question by the applicant’s argument that the earlier mark has a very weak distinctive character.

48 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 such an assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see judgment of 13 December 2007 in Xentral v OHIM — Pages jaunes (PAGESJAUNES.COM), T‑134/06, ECR, EU:T:2007:387, paragraph 70 and the case-law cited). In the present case, even if it were established that the earlier mark had a very weak distinctive character, it would have to be concluded that, in the light of the factors mentioned in paragraph 46 above, there is a likelihood of confusion between the two marks at issue.

49 It follows from the foregoing that the plea alleging infringement of Article 8(1)(b) of Regulation No 207/2009 must be rejected.

50 The action must therefore be dismissed.

Costs

51 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 OHIM.

On those grounds,

THE GENERAL COURT (Second Chamber)

hereby:

  1. Dismisses the action;
  2. Orders The Smiley Company SPRL to pay the costs.
Martins Ribeiro Gervasoni Madise

Delivered in open court in Luxembourg on 15 July 2015.