JUDGMENT OF THE GENERAL COURT (Third Chamber)
18 February 2011 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark PPT – Earlier national figurative mark PPTV – Relative ground for refusal – No likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))
In Case T‑118/07,
P.P.TV – Publicidade de Portugal e Televisão, SA, established in Lisbon (Portugal), represented by I. de Carvalho Simões and J.M. Conceição Pimenta, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by S. Laitinen, and subsequently by D. Botis, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM having been
Rentrak Corp., established in Portland, Oregon (United States),
ACTION brought against the decision of the First Board of Appeal of OHIM of 17 January 2007 (Case R 1040/2005-1) concerning opposition proceedings between P.P.TV – Publicidade de Portugal e Televisão, SA and Rentrak Corp.,
THE GENERAL COURT (Third Chamber),
composed of J. Azizi (Rapporteur), President, E. Cremona and S. Frimodt Nielsen, Judges,
Registrar: N. Rosner, Administrator,
having regard to the application lodged at the Court Registry on 16 April 2007,
having regard to the response lodged at the Court Registry on 23 July 2007,
further to the hearing on 10 September 2010,
gives the following
Judgment
Background to the dispute
1 On 7 July 2000, Rentrak Corp. (‘Rentrak’) filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 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)).
2 The trade mark for which registration was sought is the word sign PPT.
3 The services in respect of which registration was sought are in Class 41 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: ‘Video cassette distribution services on a revenue sharing or use fee basis; rental of videos and DVDs; rental of video recorders and DVD players; distribution of video tapes; rental of videos, DVDs, video recorders and DVD players on-line via the global computer network’.
4 The trade mark application was published in Community Trade Marks Bulletin No 85/2002 of 28 October 2002.
5 On 28 January 2003, the applicant in the present case – P.P.TV‑Publicidade de Portugal e Televisão, SA – filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the mark applied for in respect of the services listed in paragraph 3 above.
6 The opposition was based in particular on the earlier Portuguese figurative mark reproduced below, which was filed on 18 May 1998 and registered on 12 November 1998 under No 330371 for services in Class 41 of the Nice Agreement (‘Education, training, entertainment and sporting and cultural activities’):
7 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) and (4) of Regulation No 40/94 (now Article 8(1)(b) and (4) of Regulation No 207/2009).
8 On 27 June 2005, the Opposition Division upheld the opposition on the basis of Article 8(1)(b) of Regulation No 40/94.
9 On 25 August 2005, Rentrak filed a notice of appeal with OHIM, under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the Opposition Division’s decision.
10 By decision of 17 January 2007 (‘the contested decision’), the First Board of Appeal of OHIM annulled the Opposition Division’s decision and allowed the application for registration. In particular, it held that the differences between the signs at issue, viewed as a whole, were sufficient to rule out any likelihood of confusion on the part of the relevant public and that that assessment would not be invalidated by the finding that some of the services covered by the trade mark applied for might be considered similar to those covered by the earlier mark.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to refuse registration of the mark applied for;
– order Rentrak to pay the costs.
12 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Preliminary observations
13 In support of its action, the applicant puts forward a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94.
14 In that respect, it should be noted that Article 8(1)(b) of Regulation No 40/94 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 the 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’ is to be understood as including the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(ii) of Regulation No 40/94 (now Article 8(2)(a)(ii) of Regulation No 207/2009), ‘earlier trade marks’ means trade marks registered 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.
15 It is settled 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 the same 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 designated (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).
16 That global assessment must, as regards the visual, phonetic or conceptual similarity of the signs in question, be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant elements (order of the Court of Justice of 28 April 2004 in Case C‑3/03 P Matratzen Concord v OHIM [2004] ECR I‑3657, paragraph 29; see, by analogy, Case C‑251/95 SABEL [1997] ECR I‑6191, paragraphs 18, 22 and 23).
The relevant public
Arguments of the parties
17 The applicant claims that some of the services referred to in the trade mark application – namely, video cassette distribution services on a revenue sharing or use fee basis and the distribution of video tapes – are not intended for the business public but for the average consumer. It argues that the services in question are directly and easily available via the internet, through which it is also possible to purchase large quantities. The applicant maintains that, contrary to the assertions made in the contested decision, the relevant public for those services is accordingly no different from the public for whom the services covered by the earlier mark are intended.
18 OHIM disputes that assessment.
Findings of the Court
19 It is settled law that, 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 Case T-256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II-449, paragraph 42 and the case-law cited).
20 In the present case, the Board of Appeal found that as regards the services of video cassette distribution on a revenue sharing or use fee basis and the distribution of video tapes, referred to in the trade mark application, the relevant public was the business public. The Board of Appeal found that the term ‘distribution’ and the expression ‘on a revenue sharing or use fee basis’ clearly indicated that those services related to the delivery, transport or sale of video cassettes on behalf of undertakings supplying such cassettes and tapes. According to the Board of Appeal, average consumers generally purchase video cassettes and tapes in small quantities and do not use the services of a distributor. Lastly, the Board of Appeal stated that the business public was likely, when choosing those services, to be especially interested in and attentive to the signs in question (see paragraph 16 of the contested decision). As regards the other services covered by the marks at issue, the Board of Appeal found that the relevant public consisted of average consumers residing in Portugal who are reasonably well informed, observant and circumspect (see paragraph 17 of the contested decision).
21 It must be held first of all that since, in the present case, the earlier trade mark is a national trade mark registered in Portugal, the relevant territory for the purposes of assessing the likelihood of confusion is Portugal.
22 Next, it should be noted that, as regards the services of ‘video cassette distribution … on a revenue sharing or use fee basis’ and ‘distribution of video tapes’, referred to in the trade mark application, the applicant is wrong to claim that the relevant public consists of average consumers of mass market goods and services. The fact that the internet enables DVDs or video cassettes to be ordered, even in large quantities, cannot call into question the Board of Appeal’s finding that distribution services – possibly on a revenue sharing or use fee basis – are intended for the business public, whose members are more attentive than the average consumer, and not for the average consumer. Despite the fact that the average consumer may order large quantities of DVDs or video cassettes via the internet or that such services are available on the internet, the average consumer is neither the ordinary recipient nor the ordinary user of such services.
23 Moreover, it is necessary to accept the finding of the Board of Appeal – which, moreover, is not disputed by the applicant – that, as regards the other services covered by the marks at issue, the relevant public consists of average consumers who are reasonably well informed, observant and circumspect. Even if it cannot be ruled out that some of those other services may be intended for the business public, they are intended mainly for the general public.
24 Accordingly, the relevant public in the present case consists partly of business consumers with a high level of attention and partly of average consumers who are reasonably well informed and reasonably observant and circumspect. As was stated in paragraph 21 above with regard to the registration of the earlier mark in Portugal, the relevant public must be held to be Portuguese.
Comparison of the services in question
Arguments of the parties
25 First, the applicant claims that the Board of Appeal had no grounds for finding that services connected with the ‘rental of videos and DVDs; rental of video recorders and DVD players; rental of videos, DVDs, video recorders and DVD players on-line via the global computer network’, covered by the mark applied for, were only remotely similar to the services covered by the earlier mark. The applicant argues that, since all those services appear in the alphabetical list for Class 41 and the earlier mark covers Class 41 in general, those services must be regarded as similar, pursuant to Communication No 4/03 of the President of OHIM.
26 Secondly, as regards the services of ‘video cassette distribution … on a revenue sharing or use fee basis’ and ‘distribution of video tapes’, referred to in the trade mark application, the applicant questions whether, given that they do not appear in the alphabetical list for Class 41, those services are actually in Class 41. In addition, the applicant maintains that there is a certain complementarity between the distribution services covered by the mark applied for and its own activity, since it would not be out of the question for the applicant to purchase – through Rentrak – DVDs and video cassettes for the pursuit of its activity. Moreover, the applicant maintains that it is generally recognised that education and entertainment services can now be provided only by using digital media. Lastly, the applicant maintains that it has no guarantee that Rentrak will not affix its own trade mark to distributed products, so that such products will bear both the marks at issue.
27 OHIM disputes the applicant’s arguments.
Findings of the Court
– Preliminary observations
28 It is settled law that, in order to assess the similarity between the goods or services concerned, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, the nature of the goods or services, 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 Case T‑443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II‑2579, paragraph 37 and the case-law cited).
29 As regards the complementarity of the goods or services in question, the Court has ruled that 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, so that consumers may think that responsibility for the production of those goods or the provision of those services lies with the same undertaking (Case T‑169/03 Sergio Rossi v OHIM – Sissi Rossi (SISSI ROSSI) [2005] ECR II‑685, paragraph 60; judgment of 15 March 2006 in Case T‑31/04 Eurodrive Services and Distribution v OHIM – Gómez Frías (euroMASTER), not published in the ECR, paragraph 35; and Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraph 57).
30 It follows that it must be possible for complementary goods or services to be used together, which presupposes that they are intended for the same public (easyHotel, paragraph 29 above, paragraph 58).
– The similarity between the rental services referred to in the trade mark application and the services covered by the earlier mark
31 In the contested decision, the Board of Appeal found that the services of ‘rental of videos and DVDs; rental of video recorders and DVD players; rental of videos, DVDs, video recorders and DVD players on-line via the global computer network’, covered by the mark applied for, should be regarded as ‘remotely similar’ to the services protected by the earlier mark. The Board of Appeal in effect found that, although the aforementioned services clearly differed in nature and purpose from those protected by the earlier mark, the rental of videos, DVDs, video recorders and DVD players constituted the specific method, or the vehicle normally used, for the provision of education, training, entertainment and sporting and cultural activities, which meant that the possibility that both sets of services might be offered to the same consumers by the same undertakings could not be ruled out (see paragraph 22 of the contested decision).
32 In that regard, it should be noted that the services referred to in the trade mark application – the rental of videos, DVDs, video recorders and DVD players – differ in nature and purpose from the services covered by the earlier mark, that is to say, from services connected with education, entertainment and sporting and cultural activities.
33 Moreover, it should be noted that videos and DVDs are one of the vehicles normally used for the provision of services connected with education, training, entertainment and sporting and cultural activities. Furthermore, the rental of videos, DVDs, video recorders and DVD players is one of the means of making education, entertainment and information concerning sporting and cultural activities available to the public, so there is a connection between the services at issue. That connection is so close that it cannot be ruled out that consumers may think that video, DVD, video recorder and DVD player rental services, on the one hand, and services connected with education, entertainment and sporting and cultural activities, on the other, are provided by the same undertaking.
34 In consequence, the Board of Appeal did not err in finding that, so far as the relevant public was concerned, there was a remote similarity between the video, DVD, video recorder and DVD player rental services covered by the mark applied for and the services – connected with education, entertainment and information concerning sporting and cultural activities – covered by the earlier mark.
35 That finding is not altered by the fact that the latter services appear on the alphabetical list for Class 41. The likelihood of confusion between services covered by different marks does not depend on the classification of those services under the Nice Agreement, but rather on the similarity between those services. In that regard, Rule 2(4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) provides, moreover, that the classification of goods or services is to serve exclusively administrative purposes, so that goods or services may not be regarded as similar on the ground that they appear in the same class under the Nice Classification, and goods or services may not be regarded as dissimilar on the ground that they appear in different classes.
– The similarity between the distribution services referred to in the trade mark application and the services covered by the earlier mark
36 In the contested decision, the Board of Appeal found that the services, referred to in the trade mark application, of video cassette distribution on a revenue sharing or use fee basis and the distribution of video tapes were neither identical nor similar to the services covered by the earlier mark since: (i) they did not appear on the alphabetical list for Class 41; (ii) they were intended for the business public and not for average consumers; and (iii) they were not closely connected, or complementary, to the services covered by the earlier mark. In that regard, the Board of Appeal found that the nature and purpose of the services covered by the mark applied for clearly differed from the nature and purpose of the services covered by the earlier mark, which concern mainly services provided through education, training, entertainment and sporting and cultural activities, with a view to the development of the mental faculties of individuals and animals, as well as services intended to entertain or engage the attention of the public. The Board of Appeal therefore found that the services referred to in the application could not be regarded as substitutes for the latter. The Board of Appeal concluded that video cassette distribution services on a revenue sharing or use fee basis and the distribution of video tapes were in no way similar to education, training, entertainment and sporting and cultural activities.
37 First of all, in response to the applicant’s question set out in paragraph 26 above, it should be noted that the likelihood of confusion between the distribution services covered by the mark applied for and the services covered by the earlier mark has nothing to do with the classification of those services under the Nice Agreement (see paragraph 35 above).
38 It should also be noted that it is common ground that the distribution services covered by the mark applied for differ by their nature and purpose from the services covered by the earlier mark.
39 Moreover, as for the alleged complementarity between the services in question, it should be pointed out that complementarity implies that the services in question are likely to be used at the same time, which presupposes that they are intended for the same public (see paragraph 30 above). In the present case, however, the distribution services covered by the mark applied for are intended for the business public (see paragraph 22 above) and some of the education, training and entertainment services, and services connected with sporting and cultural activities, covered by the earlier mark, are intended for the general public (see paragraphs 6 and 23 above).
40 Accordingly, there can be no link of complementarity as regards the services which are intended for different publics. Moreover, since such services are intended for different publics, they cannot be regarded as substitutable, the one for the other; nor, therefore, can they be regarded as being in competition with each other (see, to that effect, easyHotel, paragraph 29 above, paragraph 56).
41 As regards those services covered by the earlier mark which are intended for the business public, it is necessary to assess whether there is a connection between those services and the distribution services covered by the mark applied for. In that regard, it is reasonable to hold that the business public will not consider video cassette distribution services on a revenue sharing or use fee basis or the distribution of video tapes as so significant for the purposes of providing services in connection with education, training, entertainment and sporting and cultural activities that they will think that the same undertaking is responsible for providing those services. It is reasonable to hold that business consumers will, on the basis of their experience, take the view that video cassette or video tape distribution services can be provided independently of services provided in connection with education, training, entertainment and sporting and cultural activities.
42 In the light of the foregoing, therefore, it must be held that the Board of Appeal did not err in holding that the distribution services covered by the mark applied for could not be regarded as similar to the services covered by the earlier mark.
Comparison of the signs
Arguments of the parties
43 The applicant claims that the signs at issue can be confused since they consist only of consonants, their first three letters are identical and the signs therefore have the same structure. Furthermore, since the word element of the earlier mark does not contain any component to mark a separation between the letter sequences ‘PP’ and ‘TV’, that element cannot reasonably be perceived as being divided into two distinct parts. The applicant also claims that the earlier mark does not cover television services, which means that it is unlikely that the letter sequence ‘TV’ will be perceived as an abbreviation of the word ‘television’. Moreover, the ‘phonetic and rhythmic cadence’ of the signs at issue is the same. Conceptually, the signs at issue have no meaning and are perceived as fantasy signs. Lastly, the applicant claims that the small differences that do exist between the signs at issue are not sufficient to preclude a likelihood of confusion, especially since the consumer does not normally have the two trade marks in front of him at the same time, enabling him to observe them in detail.
44 OHIM disputes that assessment.
Findings of the Court
– Preliminary observations
45 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs at issue, must be based on the overall impression given by the signs, account being taken, in particular, of their distinctive and dominant components. The perception by the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).
– The visual and conceptual similarity of the signs
46 In the contested decision, the Board of Appeal found in essence that the letter sequence ‘TV’ in the word element of the earlier mark enabled the signs at issue to be differentiated both visually and conceptually (see paragraphs 25 to 28 of the contested decision).
47 The parties do not challenge either the visual perception of the mark applied for or the lack of a conceptual dimension to that mark. They disagree, however, over the visual perception of the earlier mark and its conceptual dimension and, as a consequence, they disagree as to whether there is a visual and conceptual similarity between the signs at issue.
48 First, as regards the visual perception of the earlier mark, the Board of Appeal found that, by virtue of its size and the fact that it is printed in bold type, the word element could be regarded as the dominant element. It also held that it was difficult to imagine that the letter ‘V’ would be perceived separately from the letters ‘P’, ‘P’ and ‘T’ and that, in view of the nature of the services covered by the earlier mark, the letter sequence ‘TV’, which is the generally accepted abbreviation for the word ‘television’ – ‘televisão’ in Portuguese – would attract the consumer’s attention as an indivisible element of the earlier mark.
49 The applicant does not deny that the word element of the earlier mark may be perceived as the dominant element. In view of the small number of letters comprising the word element of the earlier mark and given the size of that element, it is appropriate to accept the Board of Appeal’s assessment that the relevant consumer will pay attention to each of the letters in question, including the letter ‘V’.
50 Secondly, as regards the conceptual perception of the earlier mark, it should be noted that that mark was registered for services connected with education, training, entertainment and sporting and cultural activities. Such services include, in particular, televised entertainment. Moreover, it is well known that the letter sequence ‘TV’ is the generally accepted abbreviation for the word ‘television’ (‘televisão’ in Portuguese).
51 In the light of the foregoing and given that the word element of the earlier mark ends in the letter sequence ‘TV’, the Board of Appeal was entitled to find, and did not err in so doing, that the word element of the earlier mark was perceived by the relevant public as a combination of two letter sequences – ‘PP’ and ‘TV’ – despite the fact that, in visual terms, there was no separation between the two sequences.
52 Thirdly, as regards the visual and conceptual comparison of the signs at issue, the Board of Appeal found in the contested decision that the three letters common to both of those signs did not endow the signs with visual similarity, given the presence of the letter sequence ‘TV’ in the word element of the earlier mark. Also, after finding, on the one hand, that the letter sequence ‘TV’ in the earlier mark would undoubtedly be perceived as the abbreviation of the word ‘television’, given the nature of the services covered by the earlier mark, and, on the other hand, that the mark applied for had no particular meaning, the Board of Appeal concluded that there was a subtle conceptual difference between the two signs (see paragraphs 26, 27 and 28 of the contested decision).
53 It is true that a visual comparison between the signs at issue reveals that they begin with the same three letters and that the letters comprising the mark applied for are all contained in the word element of the earlier mark.
54 Nevertheless, that comparison also reveals that the earlier mark differs from the mark applied for: first, because of the presence of the letter ‘V’ following the letters ‘P’, ‘P’ and ‘T’ and, second, because of the figurative element representing a striped ball within a square placed above the capital letters ‘PPTV’ of the word element. Even though that figurative element is not dominant, it cannot be regarded as totally negligible and, in consequence, the assessment of the similarity of the signs at issue cannot be carried out solely on the basis of the dominant word element (see, to that effect, OHIM v Shaker, paragraph 45 above, paragraph 42).
55 Moreover, as was stated in paragraph 50 above, it must be held that the relevant public will perceive the last two letters of the word element of the earlier mark as the abbreviation of the word ‘television’, since the earlier mark was registered for entertainment services, which include, in particular, televised entertainment. The letters of the mark applied for, on the other hand, must be regarded as having no particular meaning for the relevant public.
56 It follows that the Board of Appeal did not err in finding that the signs at issue would not be perceived by the relevant public as visually and conceptually similar.
– The phonetic similarity of the signs
57 The Board of Appeal found that the letter sequence ‘TV’ in the word element of the earlier mark cannot be overlooked for the purposes of the phonetic comparison of the marks and that, because of the presence of the letter ‘V’, the earlier mark differs from the mark applied for.
58 The applicant challenges that assessment, claiming that the signs at issue have the same ‘phonetic and rhythmic cadence’, since the first three letters will be read as [pe], [pe], [te]. Moreover, the difference in pronunciation brought about by the presence of the letter ‘V’ at the end of the word element of the earlier mark is not sufficient to enable a distinction to be made between the two signs at issue.
59 In that regard, it should be observed that, despite the fact that the first three letters of the signs at issue are identical, the earlier mark differs phonetically from the mark applied for as regards the pronunciation by the relevant public of the letter ‘V’. Thus, the letter ‘V’ in the earlier mark creates a not insignificant phonetic difference in comparison with the mark applied for.
60 That phonetic difference acquires greater force owing to the fact that, for the reasons given in paragraph 50 above, the relevant public will perceive, in the pronunciation of the earlier mark, the letter sequence ‘TV’ in the earlier mark as the abbreviation of the word ‘television’.
61 The Board of Appeal was therefore right in holding that the signs at issue differed phonetically.
– The overall analysis of the signs
62 In the light of all the foregoing, it is appropriate to endorse the Board of Appeal’s finding that an overall analysis of the signs at issue, in which they are and viewed as a whole, reveals many differences between them. The existence of the letter sequence ‘TV’ in the word element of the earlier mark cancels out any impression of visual and phonetic similarity that might arise from the fact that the signs at issue share the same letter sequence ‘PPT’.
63 The relevant public will, in this case, understand the last two letters of the word element of the earlier mark as the abbreviation for the word ‘television’, which means that that mark will differ conceptually from the earlier mark, which, for its part, has no meaning for that public.
64 It has been held that the global assessment of the likelihood of confusion implies that conceptual differences between two signs can counteract phonetic and visual similarities between them, provided that, from the point of view of the relevant public, at least one of those signs has a clear and specific meaning, so that the public is capable of grasping it immediately (Case C‑16/06 P Éditions Albert René v OHIM [2008] ECR I‑10053, paragraph 98, and Case T‑292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II‑4335, paragraph 54).
65 Lastly, given, first, the conceptual difference between the signs at issue, secondly, the visual differences brought about by the presence of the letter ‘V’ and the figurative element in the earlier mark and, thirdly, the phonetic difference resulting from the pronunciation of the letter ‘V’ in the earlier mark, the Board of Appeal was right to hold that the signs at issue were perceived overall as different.
The global assessment
Arguments of the parties
66 The applicant maintains that, in view of the similarities between the services and the marks at issue, there is a likelihood of confusion among consumers.
67 The applicant repeats its arguments based on the assertions that (i) there is a similarity between the rental services covered by the mark applied for and the services covered by the earlier mark; (ii) the relevant public is the same for all the services in question; (iii) there is a visual and phonetic resemblance between the marks at issue, since the first three letters of each of those marks are identical; (iv) the relevant consumer will not perceive the letter sequence ‘TV’ as an abbreviation of the word ‘television’; and (v) there is no conceptual difference between the marks at issue.
68 Moreover, the applicant maintains that the similarity between the marks at issue could represent a situation of unfair competition and that that criterion should also be applied in the present proceedings.
69 OHIM denies that there is a likelihood of confusion between the marks at issue.
Findings of the Court
70 The global assessment 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 (Case C-39/97 Canon [1998] ECR I‑5507, paragraph 17, and Joined Cases T-81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II-5409, paragraph 74).
71 In the present case, the Board of Appeal found that the differences between the signs at issue were sufficient to rule out any likelihood of confusion on the part of the relevant public, who would perceive the marks as a whole and who rarely have the chance to make a direct comparison between them, since a likelihood of confusion presupposes that both the degree of similarity between the marks at issue, and the degree of similarity between the services covered by those marks, is sufficiently high. Accordingly, the Board of Appeal held that at least one of the essential conditions for the application of Article 8(1)(b) of Regulation No 40/94 had not been satisfied (see paragraph 31 of the contested decision).
72 The Board of Appeal also stated that, in view of the differences between the signs at issue, that assessment would not be invalidated even if it were to be found that some of the services covered by the application may be considered similar to the services covered by the earlier mark (see paragraph 32 of the contested decision).
73 That assessment on the part of the Board of Appeal must be upheld.
74 Irrespective of the fact that there are certain similarities between the services covered by the marks at issue and that the level of attention differs as between the consumers respectively comprising the relevant public for the marks at issue, the differences between those marks are sufficiently significant to rule out any likelihood of confusion.
75 Thus, the fact that the word element of the earlier mark includes the letter ‘V’, unlike the mark applied for, will enable the relevant consumer to distinguish visually and phonetically between the marks at issue. Moreover, since the earlier mark covers televised entertainment services, the last two letters of the word element of that mark – ‘T’ and ‘V’ – will be perceived by the relevant public as the abbreviation of the word ‘television’. The fact that the earlier mark has a clear and specific conceptual dimension for the relevant public, whilst the mark applied for does not, counteracts the phonetic and visual similarities resulting from the sequence of letters (‘PPT’) which the marks at issue have in common (see, to that effect, the case-law cited in paragraph 64 above).
76 Lastly, although the applicant claims that there is unfair competition between the undertakings in question, it bases that argument merely on the existence of an alleged similarity between the signs at issue. As was stated in paragraph 65 above, such a similarity must be ruled out in the present case.
77 In the light of all the foregoing, the action must be dismissed in its entirety, without there being any need to rule on the admissibility of the applicant’s second head of claim.
Costs
78 Under Article 87(2) of the Rules of Procedure of the General Court, the unsuccessful party must be ordered to pay the costs if they have been asked for in the successful party’s pleadings.
79 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 (Third Chamber)
hereby:
1. Dismisses the action;
2. Orders P.P.TV – Publicidade de Portugal e Televisão, SA, to pay the costs.
Azizi | Cremona | Frimodt Nielsen |
Delivered in open court in Luxembourg on 18 February 2011.
[Signatures]