JUDGMENT OF THE GENERAL COURT (Second Chamber)
4 February 2014 (*)
(Community trade mark – Opposition proceedings – Application for Community figurative mark MAGNEXT and word mark MAGNEXT – Earlier national word mark MAGNET 4 – Relative ground for refusal – Likelihood of confusion – Similarity of the signs – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Cases T‑604/11 and T‑292/12,
Mega Brands International, Luxembourg, Zweigniederlassung Zug, established in Zug (Switzerland), represented, in Case T‑604/11, by A. Nordemann and T. Boddien and, in Case T‑292/12, by A. Nordemann, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by V. Melgar, acting as Agent,
the other party to the proceedings before the Board of Appeal of OHIM being
Diset, SA, established in Barcelona (Spain),
TWO ACTIONS brought against the decisions of the Fourth Board of Appeal of OHIM of 27 September 2011 (Case R 1695/2010-4) and of 24 April 2012 (Case R 1722/2011-4) concerning two sets of opposition proceedings between Diset SA and Mega Brands International, Luxembourg, Zweigniederlassung Zug,
THE GENERAL COURT (Second Chamber),
composed of N.J. Forwood (Rapporteur), President, F. Dehousse and J. Schwarcz, Judges,
Registrar: J. Weychert, Administrator,
having regard to the applications lodged at the Court Registry on 28 November 2011 (Case T‑604/11) and 3 July 2012 (Case T‑292/12),
having regard to the responses lodged at the Court Registry on 26 March 2012 (Case T‑604/11) and 5 October 2012 (Case T‑292/12),
having regard to the order of 7 March 2013 joining Cases T‑604/11 and T‑292/12 for the purpose of the oral proceedings,
having regard to the observations of the parties on the joining of Cases T‑604/11 and T‑292/12 for the purposes of judgment,
further to the hearing on 22 October 2013,
gives the following
Judgment
1 On 21 January 2008 and 29 March 2010, Mega Brands International, Luxembourg, Zweigniederlassung Zug, filed two applications for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)) and Regulation No 2007/2009.
2 The mark for which registration was sought on 21 January 2008 (‘the figurative mark applied for’) is the figurative sign set out below:
3 The goods in respect of which registration of the mark was sought fall within class 28 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Toys and playthings, in particular multi-part construction toys, it’s parts, it’s accessories and it’s fittings’.
4 The mark in respect of which registration was applied for on 29 March 2010 (‘the word mark applied for’) is the word sign MAGNEXT. That registration was sought for the same goods as those set out in paragraph 3 above.
5 On 5 September 2008 and 17 June 2010, Diset SA filed two notices of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) and Article 41 of Regulation No 207/2009 to the registration of the figurative mark applied for and the word mark applied for in respect of the goods referred to in paragraph 3 above. The opposition was based, in particular, on the earlier Spanish word mark MAGNET 4 (‘the earlier mark’), lodged on 10 July 2003 and registered on 9 December 2003 for the goods in class 28 and corresponding to the following description: ‘games, toys, gymnastic and sports articles not included in other classes; decorations for Christmas trees’.
6 The grounds put forward in support of the oppositions were those referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009) and Article 8(1)(b) of Regulation No 207/2009. The oppositions were based on all the goods covered by the earlier mark and directed against all the goods covered by the mark applied for.
7 By two decisions of 19 July 2010 and 21 June 2011, the Opposition Division upheld the oppositions.
8 The applicant lodged two appeals with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decisions of the Opposition Division. By decisions of 27 September 2011 and 24 April 2012 (‘the contested decisions’), the Board of Appeal of OHIM dismissed the two appeals.
9 As regards the comparison of the figurative mark applied for with the earlier mark, the Board of Appeal found that the two signs were visually similar to a certain degree, were aurally similar to a medium degree, whereas conceptually they were not similar unless they were associated with magnetism, in which case they would be conceptually similar to some extent. Moreover, in view of the average distinctiveness of the earlier mark and the fact that the goods covered by the marks at issue were identical, the Board of Appeal concluded that there was a likelihood of confusion.
10 As regards the comparison of the word mark with the earlier mark, the Board of Appeal found that the two signs were visually and aurally similar to a medium degree, whereas conceptually they were dissimilar. Moreover, in view of the average distinctiveness of the earlier mark and the fact that the goods covered by the marks at issue are identical, the Board of Appeal concluded that there was a likelihood of confusion.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decisions;
– reject the oppositions;
– order OHIM to pay the costs.
12 OHIM contends that the Court should:
– dismiss the actions;
– order the applicant to pay the costs.
Law
13 After hearing the parties on this point, the Court considers it appropriate to join the present cases for the purposes of the judgment, in accordance with Article 50 of its Rules of Procedure.
14 In support of its actions, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
15 In accordance with Article 8(1)(b) of Regulation No 207/2009, 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, an earlier trade mark and because of the identity or similarity of the goods or services covered by the two 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 might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. According to the same line of case-law, the likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case, in particular, the interdependence of the similarity between the trade marks and between the goods or services (see, Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
17 For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the two marks are identical or similar and that the goods or services that they cover are identical or similar. Those conditions are cumulative (see, Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 42 and the case-law cited).
18 Furthermore, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of products 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 (Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).
19 In the present case, the applicant does not challenge the findings of the Board of Appeal concerning the definition of the relevant public, composed of average Spanish-speaking consumers who are reasonably observant and circumspect, and the partial identity of the products covered by the marks at issue. In that regard, as is apparent from paragraph 5 of the contested decisions, the findings of the Opposition Division on likelihood of confusion were premissed, so far as the similarity of products is concerned, on the categories ‘games and toys/playthings’ covered by the marks at issue.
20 On the other hand, the applicant disputes the assessment made by the Board of Appeal, that the signs at issue are visually similar to a certain degree and are phonetically similar to a medium degree. Moreover, the applicant claims that the signs at issue are conceptually dissimilar.
21 In that connection, 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 (Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II‑4335, paragraph 30). The global assessment of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, 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 appreciation of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see, Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).
22 It must be held, as the applicant has argued, that the figurative mark applied for is clearly divided into two parts: ‘mag’ and ‘next’. Furthermore, the excessive size of the capital letter ‘X’ and its stylisation has the effect that the relevant public will retain the image of the English word ‘next’ as a separate element of the mark, which produces a specific visual impression not produced by the sign MAGNET 4. The word ‘magnet’, which dominates the latter sign, gives the visual impression of a single word, while the figure ‘4’ is not present in the figurative mark applied for.
23 Correlatively, the capital letter ‘X’ gives rise to a clear pronunciation of the second component of the figurative mark applied for which, combined with the visual separation of the two elements ‘mag’ and ‘next’, is likely to result in a phonetic reproduction of that mark as two words, whereas the word ‘magnet’ in the earlier mark will be pronounced as a single word, which, moreover, does not include the sound produced by the letter ‘x’.
24 It follows from those findings that the figurative mark applied for has a very weak degree of visual and phonetic similarity to the earlier mark.
25 However, since the word mark applied for differs from the dominant element ‘magnet’ of the earlier mark only by the capital letter ‘X’, without having any of the other characteristics set out in paragraphs 22 and 23 above, it must be held that it has an average degree of visual and phonetic similarity to the earlier mark.
26 As regards the comparison of the signs at issue from a conceptual point of view, the assessment set out in paragraph 19 of the contested decisions must be confirmed, that the existence in the Spanish language of the adjective ‘magnético’, commonly used by the relevant public to designate an article with magnetic properties, has the consequence that that public will associate the earlier mark with objects having such properties. In that context, the Board of Appeal rightly concluded that there was no conceptual similarity between the figurative mark applied for and the word mark applied on one hand, and the earlier mark on the other, since the word ‘magnext’, which does not exist in Spanish and is not otherwise connected to any current concept, will be perceived as being fanciful. Furthermore, the mark MAGNET 4 does not contain any element that may be associated with the English word ‘next’.
27 That being the case, the Board of Appeal referred, in paragraphs 20 and 21 of the decision of 27 September 2011, to the fact that an association of the figurative mark applied for with magnetism is unlikely, but that it could not be totally excluded, so that that mark might, in that case, have a conceptual similarity with the earlier mark. However, the Board of Appeal did not make a similar assessment as regards the comparison, from a conceptual point of view, of the word mark applied for with the earlier mark. If such an association is not foreseeable with respect to the word mark applied for, it is, for the reasons set out in paragraphs 22 and 23, purely theoretical with respect to the figurative mark applied for.
28 It follows that, conceptually, the conflicting marks are different.
29 Having regard to the foregoing, it must be held that the earlier mark has a very weak degree of similarity to the figurative mark applied for and a medium degree of similarity with the word mark applied for.
30 The applicant also challenges the Board of Appeal’s assessment that the earlier mark has an average distinctive character.
31 In that regard, it must be recalled that, the more distinctive the earlier mark, the greater will be the likelihood of confusion and therefore marks with a highly distinctive character, either per se or because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 20).
32 As the Board of Appeal stated in paragraph 19 of the contested decisions, the relevant public will associate the earlier mark with objects with magnetic properties (see paragraph 26 above). The applicant produced before the Opposition Division and before the Board of Appeal on 31 March 2009, 19 November 2010, 14 March 2011 and 21 October 2011 evidence consisting, in particular, of results of internet searches showing that the promotion of the magnetic properties of games and toys is a common practice among operators active in the sector, including the owner of the earlier mark, while the Commission adopted Decision 2008/329/EC of 21 April 2008 requesting Member States to ensure that magnetic toys placed or made available on the market display a warning about the health and safety risks they pose (OJ 2008 L 114, p. 90). According to recital 7 in the preamble thereto, magnets had already been used in toys for a long time.
33 In those circumstances, it must be held that the earlier mark MAGNET 4 sends a message that may be connected, in the mind of the relevant public (see paragraph 26 above), to the characteristics of the products for which they have been registered and which are identical to those covered by the figurative and word marks applied for, so that contrary to the finding made by the Board of Appeal, its distinctive character is not medium, but weak.
34 Thus, in the context of a global assessment of the likelihood of confusion, taking account of the very slight degree of similarity between the figurative mark applied for and the weak distinctive character of the earlier mark (see paragraphs 22 to 24 and 26 to 28 above), it must be held that the Board of Appeal has made an error of assessment by recognising a likelihood of confusion between them within the meaning of Article 8(1)(b) of Regulation No 207/2009. Even if the products covered by the marks in question are partly identical, the overall impression given to the consumer who is a member of the relevant public by each of those marks is sufficiently different to avoid such a risk, also taking account of the weak distinctive character of the earlier mark.
35 However, since the similarity between the word mark applied for and the earlier mark is greater, the finding of the Board of Appeal on the likelihood of confusion between those marks must be upheld, given the identity of the goods covered by them and in spite of the weak distinctive character of the earlier mark.
36 In those circumstances, in Case T‑604/11, OHIM’s decision of 27 September 2011 must be annulled and the application for annulment in Case T‑292/12 must be dismissed.
37 As regards the applications to have the oppositions dismissed, it must be held, first of all, that, taking account of the dismissal of the application for annulment in Case T‑292/12, the application for alteration relating to it must also be dismissed.
38 Next, given the annulment in Case T‑604/11 of the decision of the Board of Appeal of 27 September 2011, it must be observed that, if Article 65(3) of Regulation No 207/2009 authorises the General Court to review the legality of the decision of the Boards of Appeal, that possibility is, in general, limited to situations in which the case has reached a stage permitting appropriate final judgment to be given for judicial adjudication (Case T‑85/07 Gabel Industria Tessile v OHIM – Creaciones Garel (GABEL) [2008] ECR II‑823, paragraph 28). In the present proceedings, it is clear from paragraph 2 of the decision of 27 September 2011 that the opposition examined by the Board of Appeal was based not only on the earlier mark, but also on the Community figurative mark set out below:
39 The Board of Appeal having found a likelihood of confusion in respect of the earlier mark, it did not examine the opposition from the perspective of the Community figurative mark reproduced above and, therefore, did not make any assessment in that regard. Consequently, the state of the proceedings does not permit final judgment to be given, so that the applicant’s application to dismiss the opposition in Case T‑604/11 must be dismissed.
Costs
40 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since OHIM has, in substance, been unsuccessful in Case T‑604/11, it must be ordered to pay the costs incurred by the applicant, in accordance with the form of order sought by the latter. Since the applicant has been unsuccessful in Case T‑292/12, it must be ordered to OHIM’s costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1. Orders that Cases T‑604/11 and T‑292/12 be joined for the purposes of judgment;
2. Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 27 September 2011 (Case R 1695/2010-4) in Case T‑604/11;
3. Dismisses the action in Case T‑604/11 as to the remainder;
4. Dismisses the action in Case T‑292/12;
5. Orders OHIM to bear its own costs and to pay those incurred by Mega Brands International, Luxembourg, Zweigniederlassung Zug in Case T‑604/11;
6. Orders Mega Brands International, Luxembourg, Zweigniederlassung Zug to bear its own costs and to pay those incurred by OHIM in Case T‑292/12.
Forwood | Dehousse | Schwarcz |
Delivered in open court in Luxembourg on 4 February 2014.
[Signatures]