JUDGMENT OF THE GENERAL COURT (Fourth Chamber)
4 July 2014 (*)
(Community trade mark — Opposition proceedings — Application for the Community word mark GLAMOUR — Earlier international mark TUDOR GLAMOUR — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑1/13,
Advance Magazine Publishers, Inc., established in New York, New York (United States), represented by T. Raab, H. Lauf and V. Ahmann, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Schifko, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Montres Tudor SA, established in Geneva (Switzerland), represented by J.P. de Oliveira Vaz Miranda de Sousa and C. Sueiras Villalobos, lawyers,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 10 October 2012 (Case R 213/2012-2), relating to opposition proceedings between Montres Tudor SA and Advance Magazine Publishers, Inc.,
THE GENERAL COURT (Fourth Chamber),
composed of M. Prek, President, I. Labucka and V. Kreuschitz (Rapporteur), Judges,
Registrar: J. Weychert, Administrator,
having regard to the application lodged at the Court Registry on 4 January 2013,
having regard to the response of OHIM lodged at the Court Registry on 12 April 2013,
having regard to the response of the intervener lodged at the Court Registry on 14 April 2013,
further to the hearing on 26 March 2014,
gives the following
Judgment
Background to the dispute
1 On 16 September 2010, the applicant, Advance Magazine Publishers, Inc., 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 word sign GLAMOUR.
3 The goods in respect of which registration was sought are in Classes 12, 14 and 18 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 12: ‘Land, air and water vehicles and parts thereof (not included in other classes), including engines for vehicles’;
– Class 14: ‘Jewellery; precious stones; costume jewellery; cuff links; tie pins; horological and chronometric instruments’;
– Class 18: ‘Leather goods (included in class 18); goods made of imitations of leather; travelling sets; trunks and travelling bags; umbrellas, parasols and walking sticks; small leather goods’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 2010/219 of 22 November 2010.
5 On 18 February 2011, the intervener, Montres Tudor SA, filed a notice of opposition pursuant to Article 41 of Regulation No 207/2009 against registration of the mark applied for in respect of the goods in Class 14 referred to in paragraph 3 above.
6 The earlier mark relied on in support of the opposition was the international word mark TUDOR GLAMOUR with effect in the European Union, which was registered on 5 February 2010 under No 1032147 and covers goods in Class 14 corresponding to the following description: ‘Jewellery, jewellery articles, timepieces, namely watches, wristwatches, component parts of timepieces and accessories for timepieces not included in other classes; clocks and other chronometrical instruments, chronometers, chronographs, apparatus for timing sports events, apparatus and instruments for measuring and marking time not included in other classes; dials, boxes, cases and presentation cases for watches and jewellery’.
7 The ground relied on in support of the opposition was inter alia that set out in Article 8(1)(b) of Regulation No 207/2009.
8 On 19 December 2011, the Opposition Division upheld the opposition and refused registration of the mark applied for in respect of all the goods in Class 14.
9 On 26 January 2012 the applicant filed a notice of appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the decision of the Opposition Division.
10 By decision of 10 October 2012 ( ‘the contested decision’), the Second Board of Appeal of OHIM dismissed the applicant’s appeal on account of a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, between the mark applied for and the earlier international mark TUDOR GLAMOUR in respect of the goods in Class 14.
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 contends that the Court should:
– dismiss the action in its entirety;
– order the applicant to pay the costs.
13 The intervener contends that the Court should:
– dismiss the action and, accordingly, uphold the contested decision and the refusal to register the mark applied for in respect of all the goods in Class 14;
– order the applicant to pay the costs.
Law
Admissibility of the claim alleging infringement of Article 7(1)(b) of Regulation No 207/2009
14 In support of its action, the applicant invokes infringement of Article 8(1)(b) of Regulation No 207/2009 and, incidentally, infringement of Article 7(1)(b) of Regulation No 207/2009.
15 As regards the applicant’s invocation of Article 7(1)(b) of Regulation No 207/2009, the fact remains that, as the intervener correctly states, the applicant did not establish how that provision was relevant in the present case. The applicant confined itself to alleging that that provision had been incorrectly interpreted and applied, without, however, providing any reasons for that claim. In the absence of sufficient precision, that claim on the part of the applicant must be rejected as inadmissible.
16 Furthermore and in any event, it must be borne in mind that it is apparent from Articles 41 and 42 of Regulation No 207/2009 that there is no need to examine the absolute grounds for refusal set out in Article 7 of that regulation in the context of opposition proceedings. The grounds on which an opposition may be based, as laid down in Article 41(1) of Regulation No 207/2009, are solely the relative grounds for refusal set out in Article 8 of that regulation. Those are the terms on which OHIM is required to give a decision on the opposition under Article 42(5) of Regulation No 207/2009. It follows that Article 7(1)(b) of Regulation No 207/2009 is not one of the provisions in relation to which the lawfulness of the contested decision must be appraised. Consequently, the plea alleging infringement of Article 7(1)(b) of that regulation, even if were admissible, would have to be rejected as ineffective in proceedings under Article 8 of that regulation (see, to that effect, judgment of 13 July 2012 in Case T‑255/09 Caixa Geral de Depósitos v OHIM — Caixa d’Estalvis i Pensions de Barcelona (la Caixa), not published in the ECR, paragraphs 86 to 88 and the case-law cited).
Infringement of Article 8(1)(b) of Regulation No 207/2009
Introduction
17 According to the applicant, the Board of Appeal erred in finding that there was a likelihood of confusion between the marks at issue. In the present case, the Board of Appeal inter alia incorrectly protected each word element of the earlier mark.
18 OHIM and the intervener dispute the applicant’s arguments and submit that there is a likelihood of confusion between the marks at issue.
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 must not be registered if because of its identity with, or similarity to, an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark. Furthermore, under Article 8(2)(a)(iv) of Regulation No 207/2009, ‘earlier trade marks’ means trade marks registered under international arrangements which have effect in the Community with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
20 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 case-law, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case, including the interdependence between the similarity of the signs and that of the goods or services covered (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).
21 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 which 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).
22 It is in the light of those principles that the applicant’s arguments must be examined. Before beginning that examination, the following must be stated as regards the relevant public and the goods at issue.
The goods at issue
23 The Board of Appeal found that the goods at issue were identical (paragraph 18 of the contested decision). That assessment, which is not, moreover, disputed by the parties, must be upheld. Both the mark applied for and the earlier mark designate goods falling within the categories of jewellery and horological and chronometric instruments. Furthermore, as stated by the Board of Appeal, the costume jewellery, cuff links and tie pins to which the mark applied for relates are also covered by the jewellery to which the earlier mark relates. Lastly, the precious stones covered by the mark applied for are a form of jewel and are therefore part of the jewellery covered by the earlier mark.
The relevant public
24 As regards the relevant public, the Board of Appeal was right to find, in paragraph 17 of the contested decision, that, having regard to the goods at issue and the protection of the earlier trade mark throughout the European Union, the relevant public consisted of average consumers in the European Union.
25 In the global assessment of the likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation No 207/2009, account should be taken of the average consumer of the category of goods or services concerned. That consumer is, in principle, reasonably well informed and reasonably observant and circumspect. His level of attention is, however, likely to vary according to the category of goods or services in question (see, to that effect, Case T‑256/04 Mundipharma v OHIM — Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited). In the present case, in view of the nature of the goods in question, it must be held that that public’s level of attention will be high.
The comparison of the signs
26 The global assessment of the likelihood of confusion, in relation to the visual, phonetic or conceptual similarity of the signs in question, must be based on the overall impression given by the signs, 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 assessment of that likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraph 35 and the case-law cited).
27 Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (see OHIM v Shaker, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (OHIM v Shaker, paragraph 42, and judgment of 20 September 2007 in Case C‑193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42). That could be the case, in particular, where that component is capable on its own of dominating the image of that mark which members of the relevant public retain, so that all the other components are negligible in the overall impression created by that mark (Nestlé v OHIM, paragraph 43).
28 In the present case, the Board of Appeal found that the signs at issue were similar to a significant degree since the earlier sign consists of the sign applied for with the word ‘tudor’ added (paragraphs 20 and 25 of the contested decision).
29 The applicant disputes that assessment and submits that there are significant visual and phonetic differences between the signs at issue because the distinctive element ‘tudor’ in the earlier mark is in first position in that mark. Furthermore, the applicant disputes the assessment of the similarity of the signs at issue on the ground that the earlier mark is dominated by the word ‘tudor’. Unlike the word ‘glamour’, the word ‘tudor’ has no meaning and will be perceived as a fancy term. The word ‘glamour’ is, it submits, only an adjective relating to the word ‘tudor’.
30 Having regard to those arguments, the Court points out, first, that the relevant public will perceive the signs at issue as visually and phonetically similar on account of their common word element ‘glamour’.
31 The fact that the signs can be distinguished both visually and phonetically on account of the presence of the word element ‘tudor’ in the earlier mark does not make it possible to conclude that there are no visual and phonetic similarities between the signs at issue. In particular, the fact that the word element ‘tudor’ is in first position in the earlier mark does not mean that the relevant consumer attaches more importance to that element. Although it is indeed true that the first component of word marks may be more likely to catch the consumer’s attention than the components which follow, that cannot apply in all cases (see, to that effect, judgment of 16 May 2007 in Case T‑158/05 Trek Bicycle v OHIM — Audi (ALLTREK), not published in the ECR, paragraph 70 and the case-law cited). In the present case, the element ‘glamour’ in the earlier mark is as important visually and phonetically as the element ‘tudor’, in view of its size and the number of letters and syllables of which it consists. Each of those elements in the earlier mark therefore contributes to the overall impression created by the mark without one being of greater visual or phonetic importance than the other. The relevant consumer will retain each of those word elements of the earlier mark. Consequently, the word element ‘tudor’ in the earlier mark does not constitute the dominant component in that mark to the extent of rendering the word element ‘glamour’ negligible in the perception of the earlier mark that the relevant public will retain. The difference between the two signs at issue on account of the word element ‘tudor’ is not therefore sufficient to cancel out the phonetic and visual similarity stemming from the fact that the second word element of the earlier mark and the single word element of which the mark applied for consists are identical.
32 Secondly, as regards the conceptual comparison of the signs at issue, the Court points out that the word elements ‘glamour’ and ‘tudor’ have a meaning in English. The word ‘glamour’ refers to splendour and prestige whereas the word ‘tudor’ refers to a dynasty that reigned over England during the fifteenth and sixteenth centuries, which may, as the Board of Appeal correctly stated in paragraph 22 of the contested decision, lead the part of the relevant public with a command of English and an in-depth knowledge of English history to perceive the marks at issue as conceptually different. For that part of the relevant public, the earlier mark may by understood in a non-literal way as referring to the ‘the glory or magic of the Tudor royal family’, whereas the mark applied for may be understood as referring to ‘charm or allure’. Furthermore, for that part of the relevant public, the word ‘glamour’ in the earlier mark may be perceived as a qualification of the word ‘tudor’, and, therefore, be a less distinctive word than the word ‘tudor’, but it may not, however, be held to have no distinctive character in the earlier mark.
33 The word ‘tudor’ has no specific meaning for the non-negligible part of the relevant public that has only some knowledge of English, but no knowledge of English history. By contrast, the word ‘glamour’ has a meaning for that part of the relevant public since it is an English word that is widely used. Consequently, with regard to that part of the relevant public, the word ‘glamour’, which is common to the signs at issue, may be held to confer some degree of conceptual similarity on those signs.
34 Lastly, neither the word ‘tudor’ nor the word ‘glamour’ will have any meaning for the non-negligible part of the relevant public that has no knowledge of English or English history. Consequently, no conceptual comparison of the signs at issue is possible in respect of that part of the relevant public.
35 Given that, at the very least, a part of the relevant public in the European Union, such as, for example, a part of the Czech or Slovak public, has no knowledge of English and that that part of the relevant public may not be regarded as negligible, the Board of Appeal did not err in finding that, for a non-negligible part of the relevant public, the marks at issue have no particular meaning. Consequently, it must be held that there is neither a conceptual similarity nor a conceptual difference between the marks at issue for that non-negligible part of the relevant public.
36 In view of the definition of the relevant public in the present case and the need to ensure that the earlier mark is genuinely protected throughout the territory of the European Union (see paragraph 24 above), the fact that there is a conceptual difference between the marks at issue for the part of the relevant public with both a command of English and an in-depth knowledge of English history cannot be the determining factor in assessing whether or not there is no likelihood of confusion between those marks. The existence of a likelihood of confusion for the non-negligible part of the relevant public which does not perceive the conceptual difference between those marks on account of the fact that it does not have a command of English is sufficient for registration of the mark applied for to be refused. Consequently, contrary to what the applicant claims, the Board of Appeal was right to conclude that, although the word elements ‘tudor’ and ‘glamour’ have a meaning in English, that finding is not relevant in the present case. In view of the foregoing, the applicant also errs in submitting that the Board of Appeal infringed what it regards as the principle of evaluating the signs as a whole by dividing the earlier mark into its various elements and comparing the signs according to the meaning of their individual elements.
37 Lastly, as regards the global assessment of the signs at issue, the Court takes the view that, given the visual and phonetic similarities between those signs on account of their common word element ‘glamour’ and the fact that a non-negligible part of the relevant public does not perceive the different meanings of those signs, the Board of Appeal was right to find that those signs are similar to a significant degree (paragraph 25 of the contested decision). That conclusion is reinforced by the fact that, in the present case, it has also been necessary to hold that, for the non-negligible part of the relevant public with some knowledge of English, there is also a conceptual similarity between the signs at issue on account of the word ‘glamour’, which is common to both of them.
38 Consequently, even though for the part of the relevant public with a sufficient command of English and a sufficient in-depth knowledge of English history the marks at issue have different meanings which are capable of affecting the importance of the visual and phonetic similarities in the overall perception of the signs at issue, for a non-negligible part of the relevant public which does not have a command of English, the visual and phonetic similarities between those signs cannot be cancelled out by their conceptual differences.
The existence of a likelihood of confusion
39 As has been stated in paragraph 20 above, the likelihood of confusion must be assessed globally, according to the perception which the relevant public has of the signs and the goods or services in question, account being taken of all factors relevant to the circumstances of the case. A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater 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). Furthermore, it must be borne in mind that for a Community trade mark not to be registered, it suffices that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation No 207/2009 exists in part of the European Union (judgment of 23 September 2009 in Case T‑291/07 Viñedos y Bodegas Príncipe Alfonso de Hohenlohe v OHIM — Byass (ALFONSO), not published in the ECR, paragraph 26 and the case-law cited).
40 In the contested decision, the Board of Appeal found, in essence, that, as the goods covered by the marks at issue are identical and those marks are similar to a significant degree, a significant part of the relevant public would believe that those marks come from the same trade origin or from economically-linked trade origins. The Board of Appeal took the view that the judgment in Case C‑120/04 Medion [2005] ECR I‑8551 is relevant in that regard (paragraphs 25 and 26 of the contested decision).
41 The applicant disputes that assessment and claims that the approach deriving from Medion is inapplicable. It also refers to academic writings, the case-law of the German supreme courts and the case-law of the General Court.
42 In view of the identity of the goods in question, the visual and phonetic similarity of the signs at issue and the fact that those signs have no meaning for a non-negligible part of the relevant public (see paragraphs 30 to 37 above), the Board of Appeal did not err in finding, following a global assessment of the signs at issue and the goods in question, that a part of the relevant public might believe that those goods come from the same undertaking or from economically-linked undertakings and that, therefore, there is a likelihood of confusion between the marks at issue. That finding is a fortiori correct because for a non-negligible part of the relevant public there is also a conceptual similarity between the marks at issue on account of the word ‘glamour’, which is common to both of them.
43 The arguments put forward by the applicant cannot call that assessment into question.
44 First, it must be held that the applicant’s claim that the Board of Appeal erred in taking the view that Medion was relevant in the present case is ineffective. The Board of Appeal correctly found that there is a likelihood of confusion between the marks at issue for the reasons set out in paragraph 37 above. Consequently, the alleged inappropriateness of relying on Medion in support of that assessment, even if it were proved, would not be capable of calling into question the lawfulness of the contested decision.
45 Secondly, in so far as the applicant relies on academic writings and the case-law of the German supreme courts, in this case that of the Bundesgerichtshof (Federal Court of Justice) and the Bundespatentgericht (Federal Patents Court), in support of its arguments, it must be borne in mind that the Community trade mark regime is an autonomous system with its own set of objectives and rules peculiar to it; it applies independently of any national system (Case T‑32/00 Messe München v OHIM (electronica) [2000] ECR II‑3829, paragraph 47; Case T‑346/04 Sadas v OHIM — LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 70; and Case T‑150/04 Mülhens v OHIM — Minoronzoni (TOSCA BLU) [2007] ECR II‑2353, paragraph 40). Accordingly, the registrability of a sign as a Community trade mark is to be assessed on the basis of the relevant EU legislation alone (ARTHUR ET FELICIE, cited above, paragraph 70). Registrations already made in the Member States are only one factor which may be taken into consideration, without being given decisive weight, in the registration of a Community trade mark (see judgment of 6 July 2012 in Case T‑60/10 Jackson International v OHIM — Royal Shakespeare (ROYAL SHAKESPEARE), not published in the ECR, paragraph 42 and the case-law cited).
46 The Board of Appeal was not therefore required to follow the case-law of the German supreme courts relied on by the applicant. Furthermore, for the reasons set out in paragraph 42 above, the Court holds that, in the present case, the Board of Appeal did not err in finding that there is a likelihood of confusion between the marks at issue. As regards academic writings, the Court points out that it cannot be bound by the opinions of authors of academic writings and that, in the present case, the applicant does not adduce any evidence to substantiate its claims as regards the position of academic writings. Consequently, the applicant’s claims in that regard must be rejected.
47 Thirdly, in so far as the applicant relies on the General Court’s assessments of the likelihood of confusion in its judgment of 15 February 2007 in Case T‑501/04 Bodegas Franco-Españolas v OHIM — Companhia Geral da Agricultura das Vinhas do Alto Douro (ROYAL), not published in the ECR, and in ALFONSO, in support of its action, it must be borne in mind that each case must be assessed on its own merits.
48 As regards the first of those cases, it must be pointed out that it differs from the present case not only on account of the fact that the marks at issue consisted of the word signs ROYAL and ROYAL FEITORIA, but also on account of the fact that there was a clear difference between the goods concerned (see ROYAL, paragraph 53). Those differences preclude the decision adopted by the Court in that case from calling into question the Board of Appeal’s assessment in the contested decision.
49 As regards the second of those cases, it must be pointed out that it differs from the present case inter alia on account of the signs at issue, namely the word sign ALFONSO, with regard to the mark applied for, and the sign PRINCIPE ALFONSO, with regard to the earlier word marks. Furthermore, as OHIM correctly states, in that second case, the Court annulled the contested decision of the Board of Appeal on the ground that the Board of Appeal had not properly analysed the likelihood of confusion in relation to the relevant public. It had erroneously confined its analysis of the likelihood of confusion solely to Spanish consumers, without ascertaining whether such a likelihood existed with regard to other consumers who do not speak a Latin language.
50 Since none of the pleas in law relied upon by the applicant is well founded, the action must be dismissed in its entirety.
Costs
51 Under Article 87(2) 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.
52 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Fourth Chamber)
hereby:
1. Dismisses the action;
2. Orders Advance Magazine Publishers, Inc. to pay the costs.
Delivered in open court in Luxembourg on 4 July 2014.
[Signatures]