JUDGMENT OF THE GENERAL COURT (Seventh Chamber)
8 December 2015 (*)
(Community trade mark — Opposition proceedings — Application for Community figurative mark XKING — Earlier national figurative mark X — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑525/14,
Compagnie générale des établissements Michelin, established in Clermont-Ferrand (France), represented initially by L. Carlini, and subsequently by E. Carrillo, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by M. Fischer, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Continental Reifen Deutschland GmbH, established in Hanover (Germany), represented by S. Gillert, K. Vanden Bossche, B. Köhn-Gerdes and J. Schumacher, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 5 May 2014 (Case R 1522/2013-4), relating to opposition proceedings between Compagnie générale des établissements Michelin and Continental Reifen Deutschland GmbH,
THE GENERAL COURT (Seventh Chamber),
composed of M. van der Woude, President, I. Wiszniewska-Białecka (Rapporteur) and I. Ulloa Rubio, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 13 July 2014,
having regard to the response of OHIM lodged at the Court Registry on 14 November 2014,
having regard to the response of the intervener lodged at the Court Registry on 14 November 2014,
having regard to the fact that no application for a hearing was submitted by the parties within the period of one month from notification of closure of the written procedure, and having therefore decided, acting upon a report of the Judge-Rapporteur, to rule on the action without an oral procedure pursuant to Article 135a of the Court’s Rules of Procedure of 2 May 1991,
gives the following
Judgment
1 On 15 February 2012, the intervener, Continental Reifen Deutschland GmbH, 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 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).
2 Registration as a mark was sought for the following figurative sign:
3 The goods in respect of which registration was sought are in Class 12 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: ‘Tyres; inner tubes for tyres’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 55/2012 of 20 March 2012.
5 On 18 June 2012, the applicant, Compagnie générale des établissements Michelin, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 to registration of the mark applied for in respect of all the goods referred to in paragraph 3 above.
6 The opposition was based on the following earlier trade marks:
– the French figurative mark reproduced below and registered on 27 March 1990 under No 1 585 211 in respect of ‘envelopes; inner tubes for pneumatic tyres’ in Class 12:
– the figurative mark reproduced below, the subject of international registration No 150 125 granted on 7 November 1951 and producing its effects in Benelux, the Czech Republic, Spain, Italy, Hungary, Portugal, Romania, Slovenia and Slovakia in respect of goods in Class 12:
– the figurative mark reproduced below, the subject of international registration No 150 126 granted on 14 November 1990 and producing its effects in Bulgaria, Benelux, the Czech Republic, Germany, Spain, Italy, Hungary, Portugal, Romania, Slovenia and Slovakia in respect of goods in Class 12:
– the German word mark X registered on 17 March 1976 under No 942 305 in respect of ‘tyres for trucks’ in Class 12;
– the Community word mark GREEN X registered on 18 August 2007 under No 5 293 782 in respect of ‘pneumatic tyres and inner tubes for vehicle wheels; treads for retreading tyres; tracks for track vehicles; all aforementioned goods not for bicycles’ in Class 12;
– the Community word mark X-CRANE registered on 7 December 2007 under No 5 560 396 in respect of ‘pneumatic tyres and inner tubes for vehicle wheels; treads for retreading tyres; tracks for track vehicles’ in Class 12.
7 The grounds relied on in support of the opposition were those set out in Article 8(1) and (5) of Regulation No 207/2009.
8 By decision of 8 July 2013, the Opposition Division upheld the opposition to the extent that it was based on the earlier French trade mark pursuant to Article 8(1) of Regulation No 207/2009.
9 On 6 August 2013, the intervener filed a notice of appeal with OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
10 By decision of 5 May 2014 (‘the contested decision’), the Fourth Board of Appeal of OHIM upheld the appeal and rejected the opposition in its entirety. In the first place, it considered that the applicant had not proved the existence, validity and scope of protection of the earlier trade marks that were the subject of international registrations, as required by Rule 19(2) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), as amended by Commission Regulation (EC) No 1041/2005 of 29 June 2005 (OJ 2005 L 172, p. 4). The Board of Appeal therefore rejected the opposition to the extent that it was based on those marks (paragraphs 13 to 15 of the contested decision). In the second place, it rejected the opposition to the extent that it was based on the earlier French trade mark. It stated that it was apparent from the global assessment of the likelihood of confusion that the differences between the mark applied for and the earlier French trade mark, consumers’ high level of attention and the weak inherent distinctiveness of the earlier French trade mark outweighed the identity and similarity of the goods concerned (paragraphs 40 and 41 of the contested decision). In the third place, the Board of Appeal held that the earlier German word mark X and the earlier Community word marks GREEN X and X-CRANE had even fewer points of similarity with the mark applied for than the earlier French trade mark and, accordingly, that there was no likelihood of confusion in that regard either (paragraphs 42 to 45 of the contested decision). In the last place, the Board of Appeal rejected the opposition to the extent that it was based on Article 8(5) of Regulation No 207/2009, on the ground that the applicant had not adduced evidence of the earlier trade marks’ reputation (paragraphs 46 and 47 of the contested decision).
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM and the intervener to pay the costs.
12 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
Admissibility of the annexes to the application not translated into the language of the case
13 The intervener contends that a number of annexes to the application, namely, Annexes A.2, A.3, B.4, and C.3 to C.5, as well as the letter of 11 September 2014 informing the Court of a change of representation, are only in French or Spanish, whereas they should have been accompanied by a translation into the language of the case, namely, English. Those annexes are, accordingly, inadmissible.
14 Article 46(2) and (3) of the Rules of Procedure of the General Court provides as follows:
‘2. Any material produced or annexed that is expressed in another language must be accompanied by a translation into the language of the case.
3. However, in the case of substantial material, translations may be confined to extracts. At any time the President may, of his own motion or at the request of one of the parties, call for a complete or fuller translation.’
15 In the light of the purpose of Article 46(2) and (3) of the Rules of Procedure, it must be held that, in the absence of a request from a party to that effect, it is only if the translation of annexes into the language of the case appears necessary for the purposes of the efficient conduct of the proceedings that it is for the Registrar to have it carried out (see, to that effect, judgment of 15 June 2010 in Mediaset v Commission, T‑177/07, ECR, EU:T:2010:233, paragraph 37 and the case-law cited).
16 In the present case, neither the intervener nor OHIM has requested the Court to call for a translation from the applicant of the annexes referred to in paragraph 13 above into the language of the case.
17 Moreover, the Court does not consider that such a translation was necessary for the purposes of the efficient conduct of the proceedings. First, regarding the letter of 11 September 2014 and Annexes A.2 and A.3 to the application, those documents were produced pursuant to procedural requirements for the purposes of identifying the parties and their representatives. Second, Annexes B.4 and C.5 to the application are, respectively, a decision of the Institut national de la propriété industrielle (INPI) (French National Institute for Industrial Property) and a survey carried out among French consumers in 2004. The applicant has summarised the content of those annexes in the application. Third, Annex C.3 to the application, entitled ‘Description [of the goods in question] and [sales] figures ... relating to 2008’, essentially contains numerical data which do not require translation. Fourth, Annex C.4 to the application contains brochures in French relating to the goods in question for France for the years 2008 and 2009. The applicant has also submitted, in Annex C.1 to the application, identical brochures in English relating to the goods in question for the United Kingdom for the years 2008 and 2009.
18 Therefore, it must be held that those annexes are admissible.
Substance
19 In support of its action, the applicant raises, in essence, three pleas in law, alleging, first, infringement of Rule 19(2) of Regulation No 2868/95, second, infringement of Article 8(1)(b) of Regulation No 207/2009, and third, infringement of Article 8(5) of Regulation No 207/2009.
20 It is necessary to begin by examining the second plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
21 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, 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 includes the likelihood of association with the earlier trade mark.
22 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 from economically-linked undertakings constitutes a likelihood of confusion. According to the same line of 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 in Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
23 As a preliminary point, it should be borne in mind that the applicant relied on six earlier trade marks in support of its opposition (see paragraph 6 above).
24 It is necessary to begin by taking the earlier French trade mark into account.
25 The applicant does not challenge the Board of Appeal’s finding that the goods in question, which were in Class 12, were intended for professionals and for end consumers whose degree of attentiveness is high and that the likelihood of confusion had to be assessed having regard to consumers in France. Nor does it challenge the Board of Appeal’s finding that the goods covered by the mark applied for and the goods covered by the earlier French trade mark are identical or very similar. By contrast, it contests the Board of Appeal’s assessment regarding the similarity of the mark applied for and the earlier French trade mark, the distinctive character of the earlier French trade mark and the global assessment of the likelihood of confusion.
Similarity of the signs
26 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 (judgments of 23 October 2002 in Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, ECR, EU:T:2002:261, paragraph 30, and 10 December 2008 MIP Metro v OHIM — Metronia (METRONIA), T‑290/07, EU:T:2008:562, paragraph 41).
27 In addition, 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 those 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 that regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see judgment of 12 June 2007 in OHIM v Shaker, C‑334/05 P, ECR, EU:C:2007:333, paragraph 35 and the case-law cited).
28 In assessing the dominant character of one or more given components of a composite trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the composite mark (judgment of 13 May 2015 in easyGroup IP Licensing v OHIM — Tui (easyAir-tours), T‑608/13, EU:T:2015:282, paragraph 36).
29 In the present case, the comparison concerns the figurative mark applied for XKING and the earlier French figurative mark X reproduced in paragraphs 2 and 6 above, respectively.
30 As regards the distinctive and dominant elements of the figurative mark applied for XKING, the Board of Appeal observed that, when the word ‘king’ was associated with a word which had meaning, it designated the high quality of a product. By contrast, it considered that when that word was associated with an element which had no meaning, such as the letter ‘x’, it was perceived as a fanciful term or a name and, in any event, as a distinctive element (paragraph 25 of the contested decision).
31 The applicant contests that assessment, arguing that the word ‘king’ is a laudatory term devoid of distinctiveness in relation to the goods in question and that it is clearly secondary to the letter ‘x’. That letter, in view of its position at the beginning of the sign, its different graphical representation to the element ‘king’ and its larger size, is the distinctive and dominant element of the mark applied for.
32 The applicant’s arguments must be upheld. It should be noted that the word element ‘king’ of the mark applied for will be perceived, by the French public which understands basic English, as meaning ‘king’ or ‘the best’ and, thus, as conveying the laudatory message that the goods in question — tyres and parts for tyres — are of good quality. Contrary to the Board of Appeal’s assertions and to what OHIM contends, the fact that the letter ‘x’ has no meaning will not prevent consumers from perceiving that message. In addition, contrary to what the intervener contends, that word, which differs from the letter ‘x’ in terms of colour and size, is clearly distinct from that letter even though they are not separated by a space.
33 Furthermore, the intervener’s argument that, in essence, it is apparent from OHIM’s decision-making practice that the word ‘king’ does not convey a laudatory message in respect of the goods in question cannot succeed: when reviewing the legality of decisions of the Board of Appeal, the General Court is not bound by the previous decision-making practice of OHIM (judgments of 26 April 2007 in Alcon v OHIM, C‑412/05 P, ECR, EU:C:2007:252, paragraph 65, and 22 April 2008 Casa Editorial el Tiempo v OHIM — Instituto Nacional de Meteorología (EL TIEMPO), T‑233/06, EU:T:2008:121, paragraph 48).
34 It follows that, contrary to what was held by the Board of Appeal in the contested decision, the word ‘king’ of the mark applied for is weakly distinctive.
35 In addition, it should be noted that, according to case-law, consumers generally pay greater attention to the beginning of a mark than to the end and that the element placed at the beginning of a sign is likely to have a greater impact than the rest of the sign (see judgment of 11 May 2010 in Wessang v OHIM — Greinwald (star foods), T‑492/08, EU:T:2010:186, paragraph 48 and the case-law cited).
36 Given that the letter ‘x’ is placed at the beginning of the mark applied for, that it has no meaning in relation to the goods in question, that it is bigger than the word ‘king’ and that that word has a weak distinctive character, the letter ‘x’ will be perceived as the dominant element of the mark applied for.
37 Regarding the visual similarity, the Board of Appeal observed that the mark applied for and the earlier French trade mark shared the letter ‘x’, which was the only element of that earlier trade mark. It considered that the graphical representation of the letter ‘x’ of the mark applied for was not identical to the graphical representation of that letter in the earlier French trade mark. The Board of Appeal added that those marks gave a different overall impression, as the mark applied for had an additional element ‘king’. It concluded that the mark applied for and the earlier French trade mark were visually similar to a low degree (paragraph 26 of the contested decision).
38 The applicant contests that assessment by the Board of Appeal.
39 It should be noted that the mark applied for is a figurative mark which consists of the element ‘xking’ written in italics in stylised capital letters. The letter ‘x’ is white with a thick black outline and is followed by the word ‘king’, which is black and smaller in size.
40 The earlier French trade mark is a figurative mark which consists of the letter ‘x’ written as a capital in a standard typeface and depicted in white with two thin black outlines.
41 OHIM’s argument that there are significant differences between the letter ‘x’ of the mark applied for and the letter ‘x’ of the earlier trade mark owing to their different stylisations, the fact that one is sloping while the other is not, and the fact that one has a single thick outline while the other has two thin outlines cannot succeed. The letter ‘x’ of the mark applied for and the letter ‘x’ of the earlier trade mark are both white and outlined in black. It must therefore be held, as the applicant maintains, that those letters appear similar overall.
42 The mark applied for contains the additional word element ‘king’. It is true that, as OHIM has stated, the word ‘king’ of the mark applied for is longer than the letter ‘x’ of that mark and is not negligible in the overall visual impression produced thereby. However, the letter ‘x’ of the mark applied for, as its dominant element, carries more weight in the comparison of the marks at issue than the word ‘king’.
43 Accordingly, in view of the dominant character of the letter ‘x’ of the mark applied for, the weak distinctive character of the additional element ‘king’ of that mark, and the similarity between the letter ‘x’ of the mark applied for and the letter ‘x’ of the earlier French trade mark which is the only element of that mark, it must be held that those marks are visually similar to an average degree.
44 It must therefore be held that the Board of Appeal was wrong to consider that the visual similarity was low.
45 Regarding the phonetic similarity, the Board of Appeal held that, even though the marks at issue had the same first syllable, they were similar to a lower-than-average degree due to their different rhythm and intonation.
46 The applicant argues that, as the earlier trade mark is, phonetically, entirely contained within the mark applied for, those marks must be regarded as similar.
47 It should be noted that the mark applied for will be pronounced as two syllables, ‘x’ and ‘king’, while the earlier French trade mark will be pronounced as a single syllable, ‘x’, and that the rhythm and intonation of those two marks are only slightly different. Since the marks at issue share the same first syllable, those marks are phonetically similar to an average degree.
48 It must therefore be held that the Board of Appeal was wrong to consider that the phonetic similarity was lower than average.
49 Regarding the conceptual similarity, the Board of Appeal held that the marks at issue were not similar, given that the earlier French trade mark was composed of a single letter and a single letter cannot convey a concept (paragraph 28 of the contested decision).
50 In accordance with the case-law, if one of the marks at issue has no meaning, it is not possible to make a conceptual comparison of those marks (see, to that effect, judgment of 16 September 2013 in Gitana v OHIM — Teddy (GITANA), T‑569/11, EU:T:2013:462, paragraph 67 and the case-law cited).
51 In the present case, as the earlier French trade mark has no meaning, a conceptual comparison of the mark applied for and that earlier trade mark is not possible.
52 It follows that the mark applied for and the earlier French trade mark are visually and phonetically similar to an average degree and that they are not comparable conceptually.
Assessment of the earlier French trade mark’s distinctive character and the likelihood of confusion
53 The Board of Appeal held that the inherent distinctiveness of the earlier French trade mark was weak in view of the goods at issue, which are tyres or parts for tyres. In that regard, it explained that letters were displayed on tyres to designate their characteristics, such as their size or their load index, and that it was therefore unlikely that consumers would pay attention to a single letter even if it were slightly stylised (paragraph 38 of the contested decision).
54 The applicant invokes a previous decision of OHIM in which the distinctive character of its earlier figurative mark X, registered in respect of pneumatic tyres, was held to be normal.
55 It should be noted that, while it is true that, as OHIM contends, it is apparent from the brochures provided by the applicant in Annexes C.1 and C.4 to the application that letters, whether in isolation or combined with other letters or numbers, are often displayed on tyres to designate their characteristics, such as the letters ‘r’ (radial tyre), ‘v’ (speed rating) or ‘w’ (tread), by contrast, it is not apparent from those brochures that the letter ‘x’ designates a characteristic of tyres. In addition, the letter ‘x’ of the earlier French trade mark is not a standard letter ‘x’. It is white and has a double outline in black. Accordingly, that stylised letter will not be perceived as designating a characteristic of those goods.
56 Therefore, the inherent distinctiveness of the earlier French trade mark must be regarded as normal.
57 In view of the strong similarity or identity of the goods concerned, the average degree of similarity between the mark applied for and the earlier French trade mark and the normal inherent distinctiveness of that earlier trade mark, it must be held that there is a likelihood of confusion, even if the relevant public’s degree of attentiveness is high.
58 Accordingly, the Board of Appeal was wrong to conclude that the opposition had to be rejected to the extent that it was based on the earlier French trade mark.
59 Consequently, the second plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009, must be upheld, without it being necessary to examine whether the Board of Appeal was also wrong to hold that the opposition had to be rejected to the extent that it was based on the other earlier trade marks.
60 It follows from the foregoing that the second plea in law must be upheld and the contested decision must be annulled, without there being any need to examine the other pleas in law raised by the applicant.
Costs
61 Under Article 134(1) 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 been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by the applicant.
62 Since the intervener has been unsuccessful, it must be ordered to bear its own costs.
On those grounds,
THE GENERAL COURT (Seventh Chamber)
hereby:
1. Annuls the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 5 May 2014 (Case R 1522/2013-4);
2. Orders OHIM to bear its own costs and to pay those incurred by Compagnie générale des établissements Michelin;
3. Orders Continental Reifen Deutschland GmbH to bear its own costs.
Van der Woude | Wiszniewska-Białecka | Ulloa Rubio |
Delivered in open court in Luxembourg on 8 December 2015.
[Signatures]