JUDGMENT OF THE GENERAL COURT (Eighth Chamber)
21 May 2015(*)
(Community trade mark — Opposition proceedings — International registration designating the European Community — Word mark F1H2O — Community, international, Benelux and national word and figurative marks with the element ‘F1’ — Relative grounds for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EC) No 207/2009 — Unfair advantage taken of the distinctive character or reputation of the earlier trade marks — Article 8(5) of Regulation No 207/2009 — Rejection of the opposition)
In Case T‑55/13,
Formula One Licensing BV, established in Rotterdam (Netherlands), represented initially by B. Klingberg and subsequently by K. Sandberg, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Idea Marketing SA, established in Lausanne (Switzerland), represented by B. Brisset and O. Vanner, lawyers,
ACTION brought against the decision of the Fourth Board of Appeal of OHIM of 20 November 2012 (Case R 1247/2011-4), concerning opposition proceedings between Formula One Licensing BV and Idea Marketing SA.
THE GENERAL COURT (Eighth Chamber),
composed of D. Gratsias, President, M. Kancheva and C. Wetter (Rapporteur), Judges,
Registrar: I. Dragan, Administrator,
having regard to the application lodged at the Court Registry on 4 February 2013,
having regard to OHIM’s response lodged at the Court Registry on 6 May 2013,
having regard to the intervener’s response lodged at the Court Registry on 16 May 2013,
further to the hearing on 22 January 2015,
gives the following
Judgment
Background to the dispute
1 On 28 March 2007, the intervener, Idea marketing SA, obtained from the World Intellectual Property Organisation (WIPO) an international registration designating the European Community in respect of the word mark F1H2O.
2 The Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) received notification of the international registration of the mark applied for on 5 July 2007.
3 The goods and services for which registration was sought are in Classes 9, 25, 38 and 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, for each of those classes, to the following description:
– Class 9: ‘Sunglasses and spectacles; cords, spectacle frames, lenses and cases for sunglasses and optical apparatus; apparatus for recording, transmitting and reproducing sound or images; magnetic recording media, recording disks; data processing and computer apparatus and equipment, computers; video games, games for computers and microcomputers; game apparatus for computers and software, in particular computer games’;
– Class 25: ‘Clothing, footwear, headgear’;
– Class 38: ‘Broadcasting by radio and television, also on digital networks in particular services directly or indirectly linked to the Internet; telecommunications; electronic transmission of data, images and sound using computer terminals and computer networks, also via the Internet and websites’;
– Class 41: ‘Education, training; entertainment; sporting and cultural activities; direction, management, organisation and execution of sporting competitions, shows, films, games provided online on a computer network’.
4 The particulars of the international registration designating the European Community, pursuant to Article 152(1) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1), were published in Community Trade Marks Bulletin No 34/2007 of 16 July 2007.
5 On 16 April 2008, the applicant, Formula One Licensing BV, filed a notice of opposition to registration of the mark applied for.
6 The opposition was based on the registration of the following earlier word marks:
– international registration of the F1 sign, as No 732 134 of 20 December 1999 with effect in the Czech Republic, Denmark, Germany, Spain, France, Italy, Hungary, Austria, Portugal, Finland and the United Kingdom for various goods and services in Classes 3, 4, 9, 12, 14, 16, 18, 21, 24, 25, 26, 28, 30, 34, 35, 38, 41 and 42, for, inter alia, the following goods and services:
– Class 9: ‘Clothing, shoes, headgear, helmets, gloves, belts, goggles, all aforesaid products for safety purposes; illuminated and mechanical signs and signposts; anti-dazzle screens; sunglasses and spectacles; cords, frames, lenses and spectacle cases for sunglasses and optical products; electronic anti-theft equipment, alarm and security systems; electronic organisers; remote-controlled locking equipment; electronic remote-control devices; appliances for personal safety; encoded cards and magnetic cards; batteries; electric, electronic, scientific, optical, cinematographic, photographic, radio reception, radio transmission, intercommunication, telephone, sound reproducing, sound recording equipment and instruments; satellite equipment; data-processing equipment and computers; computer programmes, recorded (software); computer hardware; video recorders and video players; video cassettes, records, tapes, compact discs; video games equipment; cameras; receivers; electronic amusement equipment operated by coins or a counter; educational and instruction equipment and instruments; fire-extinguishing apparatus; compasses (not for drawing purposes); audio and video recording equipment and cassettes; compact disc equipment; digital equipment and digitisers; tapes and electronic data carriers containing publications such as books; television equipment; exposed films; flashlights; magnets; pedometers; counting equipment; speedometers; kilometre counters; calculators; recording equipment; scoreboard and timing equipment; binoculars; unrecorded tapes and discs; recorded tapes and discs, electronic games adapted for television; computer games; video games; CD-ROMs; parts and accessories of aforementioned goods, included in this class’;
– Class 25: ‘Clothing articles; T-shirts; swimwear; rainwear; sportswear; recreational wear; nightwear; ski suits; underwear; tracksuits; trench coats; overalls; coats and capes; suits; bathrobes; polo shirts; hats and head coverings; cap visors; sunshades; baseball caps; ties; shawls; gloves; belts; suspenders; boots; ski boots; overshoes; shoes; sandals; socks; headbands and wristbands; sports shoes; parts and accessories for the aforementioned goods, not included in other classes’;
– Class 38: ‘Radio and television broadcasts, also using the Pay TV system; satellite and cable broadcasts; radio and television broadcasts on digital networks including the Internet and Internet related interactive services; telecommunications; electronic data, image and sound transmission on computer terminals and networks; the broadcasting of television programmes; the aforementioned services also using and by means of the Internet and Websites’;
– Class 41: ‘The arranging, organising and holding of sports events, tournaments, competitions; the production of sports events, tournaments and competitions for radio, film and television; providing sports information using real-time chat boxes and computer bulletin boards; providing recreational facilities for sports events, tournaments and competitions; organising music events and concerts; producing and promoting artists and compact discs, the aforementioned services also using and by means of the Internet and Websites’.
– United Kingdom F1 trade mark registered as No 2277746B on 9 July 2004 for various goods and services in Classes 4, 9, 18, 25 and 42, and corresponding, inter alia, to the following goods and services:
– Class 9: ‘Audio and video apparatus; televisions; photographic apparatus; computer apparatus; binoculars; video game amusement apparatus; parts and fittings for the aforesaid goods’;
– Class 25: ‘Articles of clothing; sportswear and leisurewear; hats and headgear; boots; shoes; sweatbands and wristbands; footwear for sports’;
– Class 38: ‘Telecommunications services; electronic transmission of data, images and sound via computer terminal and networks’.
7 The opposition was also based on the registration of the following earlier figurative marks (‘the earlier figurative marks’):
– Community trade mark No 3 934 387, registered on 17 November 2005 for various goods and services in Classes 1, 3, 4, 7, 8, 9, 11, 12, 14, 16, 18, 21, 25, 28 to 30, 32 to 36, 38, 39 and 41 to 43, and corresponding to the following figurative sign;
– international registration No 845 571, of 13 July 2004, with effect in Bulgaria, the Czech Republic, Denmark, Germany, Greece, Spain, France, Ireland, Italy, Cyprus, Latvia, Lithuania, Hungary, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, Sweden and the United Kingdom for goods and services in Classes 1, 3, 4, 7, 8, 9, 11, 12, 14, 16, 18, 21, 24, 25, 28, 29, 30, 32 to 36, 38, 39 and 41 to 43, and corresponding to the following figurative sign;
– Benelux trade mark No 749 056, registered on 4 February 2004 for various goods and services in Classes 1, 3, 4, 7 to 9, 11, 12, 14, 16, 18, 21, 24, 25, 28 to 30, 32, 36, 38, 39 and 41 to 43, and corresponding to the following figurative sign;
– United Kingdom trade mark No 2277746D, registered on 31 December 2004 for various goods and services in Classes 16, 35 and 38, and corresponding to the following figurative sign;
– Community trade mark No 631 531, registered on 19 May 2003 for various goods and services in Classes 4, 9, 16, 18, 25, 28, 38 and 41, and corresponding to the following figurative sign;
– Community trade mark No 3 429 396, registered on 6 October 2005 for various goods and services in Classes 1, 3, 7, 8, 11, 12, 14, 18, 21, 29, 30, 32 to 36, 39, 42 and 43, and corresponding to the following figurative sign;
– international registration No 714 320, of 29 April 1999, with a priority date of 11 July 2003 and with effect in the Czech Republic, Germany, Spain, France, Ireland, Italy, Latvia, Lithuania, Austria, Poland, Portugal, Romania, Slovenia, Slovakia and Finland for goods and services in Classes 4, 9, 12, 16, 18, 25, 28, 35, 38, 41 and 42, and corresponding to the following figurative sign;
– international registration No 823 226, of 5 September 2003, with effect in Bulgaria, the Czech Republic, Denmark, Germany, Estonia, Greece, Spain, France, Ireland, Italy, Latvia, Lithuania, Hungary, Austria, Poland, Portugal, Romania, Slovenia, Slovakia, Finland, Sweden and the United Kingdom for goods and services in Classes 1, 3, 4, 7, 8, 9, 11, 12, 14, 16, 18, 21, 24, 25, 28, 29, 30, 32 to 36, 38, 39 and 41 to 43, and corresponding to the following figurative sign;
– Benelux trade mark No 732 601, registered on 11 July 2003 for various goods and services in Classes 1, 3, 4, 7 to 9, 11, 12, 14, 16, 18, 21, 24, 25, 28, 29, 30, 32, 36, 38, 39 and 41 to 43 and corresponding to the following figurative sign:
8 The opposition was based on all of the goods and services protected by the earlier word marks and figurative marks referred to in paragraphs 6 and 7 above and was directed against all of the goods and services designated by the mark applied for.
9 The grounds relied on in support of the opposition were those referred to in Article 8(1)(b) and Article 8(5) of Regulation No 207/2009.
10 On 20 April 2011, the Opposition Division rejected the opposition.
11 On 14 June 2011, the applicant filed an appeal with OHIM, under Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision.
12 By decision of 20 November 2012 (‘the contested decision’), the Fourth Board of Appeal of OHIM dismissed the appeal, holding that there was no likelihood of confusion between the earlier marks relied on and the mark applied for within the meaning of Article 8(1)(b) of Regulation No 207/2009. It also dismissed the appeal in so far as it was based on Article 8(5) of Regulation No 207/2009.
13 As regards the registration of the earlier international mark No 732 134 and the earlier United Kingdom word mark No 2277746B (together ‘the earlier word marks’), the Board of Appeal held that they had a low degree of visual and phonetic similarity with the contested mark and were conceptually different from the latter. It considered that the relevant public would not break down the mark applied for into two elements, namely, ‘F1’ and ‘H2O’, but would perceive the mark applied for in its entirety as referring to a chemical formula.
14 The Board of Appeal also found that the earlier word mark corresponding to international registration No 732 134 was devoid of any inherently distinctive character for the goods and services connected with sporting events or the merchandising thereof. As regards the other goods and services designated by the mark applied for, it held that the earlier word marks had a limited inherent distinctive character, which was not increased by the use of those marks. It held that the earlier word marks had not acquired a high level of distinctive character since the reputation stemmed from the figurative elements of the earlier figurative marks and not from the element ‘F1’.
15 In the light of those considerations, the Board of Appeal held, when examining the marks concerned as a whole, that the conceptual differences between them were decisive in so far as they offset the weak visual and phonetic similarities.
16 As regards the earlier figurative marks, the Board of Appeal held that there was no similarity between the marks at issue and that therefore there was no likelihood of confusion.
17 The Board of Appeal also rejected the opposition based on Article 8(5) of Regulation No 207/2009. In that regard, it held that it could not be claimed that the earlier word marks enjoyed any reputation. With regard to the earlier figurative marks, it held that they enjoyed a reputation for certain goods and services, but dismissed the appeal by holding that the earlier figurative marks and the mark applied for were not similar.
Forms of order sought
18 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs;
– order the intervener to pay the costs incurred in the proceedings before OHIM.
19 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
20 The applicant puts forward two pleas in law in support of its action, the first alleging infringement of Article 8(1)(b) of Regulation No 207/2009 and the second alleging infringement of Article 8(5) of that regulation.
The first plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009
21 First, as regards the earlier word marks, the applicant claims, noting that the relevant products and services are identical, that the Board of Appeal made an incorrect assessment in that it concluded that there was no likelihood of confusion between those earlier word marks and the mark applied for. The applicant argues, in essence, that there is a high degree of similarity between the marks at issue and that the element composed of the alphanumeric combination ‘F1’ is the dominant element or has, at least, an independent distinctive character in the mark applied for, and that the alphanumeric element composed of ‘H2O’ is negligible because it is descriptive. From a conceptual point of view, and contrary to the conclusion reached by the Board of Appeal, the earlier word marks have more than a generic meaning and have an independent distinctive character, which refers specifically to the commercial origin of goods and services promoted under that mark, as is the case, for example, for the Indy and Nascar marks, which also refer to the organisation of motor races. The relevant public perceives the sign applied for as referring to powerboat racing (which by definition takes place on water). The applicant, referring, in particular, to the extracts from the intervener’s website, claims that it is clear that this is the meaning which the intervener aims to give to the mark applied for and not one based on a resemblance to a chemical formula, as found by the Board of Appeal and as claimed by the intervener. The applicant, moreover, submitted, for the first time before the Court, new evidence with which it sought to supplement the website extracts submitted to the OHIM with updates from the intervener’s website.
22 As regards the distinctive character of the earlier word marks, the applicant claims that those marks have an inherently distinctive character and that the Board of Appeal distorted the evidence submitted during the opposition proceedings showing that the earlier marks enjoyed a reputation which helped to confer enhanced distinctiveness on those marks. The Board of Appeal accordingly failed to carry out a correct evaluation of the evidence and documents submitted by the applicant.
23 Given all those factors and their interdependence and bearing in mind that the consumer will maintain only an imperfect recollection of the marks at issue, the applicant claims that the Board of Appeal should have concluded that there was a likelihood of confusion in the eyes of the relevant public.
24 Second, regarding the earlier figurative marks, the applicant submits that the Board of Appeal was wrong to conclude that there was no likelihood of confusion. It states, in that regard, that the Board of Appeal erred in finding that the distinctiveness of the earlier figurative marks lay in their figurative structure and not in the element composed of the alphanumeric combination ‘F1’. The applicant accordingly claims that the comparison should have been made on the basis of that element which is dominant in the marks at issue.
25 The applicant relies on the same complaint as regards the earlier figurative marks containing the word element ‘Formula 1’ and adds that the dominant element of the mark is the element composed of the alphanumeric combination ‘F1’ and that, therefore, the word element ‘Formula 1’ should not be taken into account. For the rest, the applicant, in essence, relies on the same arguments as those relating to the earlier word marks.
26 OHIM and the intervener dispute the applicant’s arguments and argue that the extracts from the website submitted for the first time before the Court are inadmissible.
27 According to Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for may not 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 two 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, pursuant to Article 8(2)(a)(ii) to (iv) of Regulation No 207/2009, earlier trade marks include marks registered in a Member State, marks registered under international arrangements which have effect in a Member State and marks registered under international arrangements which have effect in the European Union, with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
28 According to settled case-law, the risk that the public may believe that the goods or services in question come from the same undertaking or from economically-linked undertakings constitutes a likelihood of confusion. According to that same line of case-law, the likelihood of confusion must be assessed globally according to the relevant public’s perception of the signs and the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see judgment of 9 July 2003 in Laboratorios RTB v OHIM — Giorgio Beverley Hills (GIORGIO BEVERLEY HILLS), T‑162/01, ECR, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
The definition of the relevant public and the comparison of the goods and services at issue
29 According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see judgment of 13 February 2007 in Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, ECR, EU:T:2007:46, paragraph 42 and the case-law cited).
30 The relevant public of the goods and services in question is not made explicitly clear in the contested decision. OHIM sets out in its defence, reproducing the Opposition Division’s definition of the relevant public, that ‘[e]ven though the Board of Appeal did not make any specific comment in this regard, it is clear that the relevant public encompasses ordinary consumers as well as, as regards some of the services in Classes 38 and 41, professional users in all the territories where the earlier marks are protected that is, the Czech Republic, Denmark, Germany, Spain, France, Italy, Hungary, Austria, Portugal, Finland and the United Kingdom (the earlier word marks) and the European Union (the earlier figurative marks)’.
31 Although the Board of Appeal did not explicitly define the relevant public, it stated, in paragraph 29 of the contested decision, that the perception and the degree of attention of the relevant public must be taken into account when the likelihood of confusion is assessed. Despite the vagueness of that statement, it must be held that, in the light of the Opposition Division’s decision, the Board of Appeal was referring to the relevant public as defined by the Opposition Division (see, to that effect, judgments of 28 June 2011 in ReValue Immobilienberatung v OHIM (ReValue), T‑487/09, EU:T:2011:317, paragraph 20 and the case-law cited, and of 8 March 2013 in Mayer Naman v OHIM — Daniel e Mayer (David Mayer), T‑498/10, EU:T:2013:117, paragraphs 56 and 57).
32 In the light of the foregoing, it must be considered that the Board of Appeal endorsed the Opposition Division’s definition of the relevant public, which OHIM restated in its defence. It is clear from examination of the case-file that the definition of the relevant public reproduced in paragraph 30 above, which, moreover, is uncontested by the parties, must be held to be correct.
33 Furthermore, the Board of Appeal correctly concluded in paragraph 41 of the contested decision that the goods and services which the mark applied for was intended to protect were, in essence, identical to the goods and services covered by the earlier word and figurative marks. The parties do not, moreover, contest that point.
The comparison between the mark applied for and the earlier word marks
34 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, 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 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).
– The visual comparison
35 The mark applied for and the earlier word marks have in common the element composed of the alphanumeric combination ‘F1’, placed at the beginning of each of those marks. The mark applied for is composed of three letters ‘f’, ‘h’ and ‘o’ and two figures ‘1’ and ‘2’. As a word mark, it must be pointed out that the mark applied for does not, in any event, contain any colour, figurative, typographical or other element which would suggest that the letters and figures of which it is composed should be viewed as different components. All the letters are written without spaces and in uppercase. The earlier word marks only contain the word element ‘F1’.
36 In view of the foregoing, it must be held that the mark applied for cannot be broken down into several elements composed of the alphanumeric combinations and thus the sole element of which that mark is composed is twice as long as the sole element of which the earlier word marks are composed. This does not prevent the relevant public from recalling the mark applied for in its entirety because all the characters of which it is composed are short enough and appear to consumers, unfamiliar with chemistry, as an imaginary or even existing chemical formula.
37 Admittedly, the consumer normally attaches more importance to the first part of words (see, to that effect, judgment of 17 March 2004 in El Corte Inglés v OHIM — González Cabello (MUNDICOR), T‑183/02 and T‑184/02, ECR, EU:T:2004:79, paragraph 81). However, that argument cannot hold in all cases (see, to that effect, judgment of 6 July 2004 in Grupo El Prado Cervera v OHIM — Héritiers Debuschewitz (CHUFAFIT), T‑117/02, ECR, EU:T:2004:208, paragraph 48) and cannot, in any event, cast doubt on the principle that when assessing the similarity of marks account must be taken of the overall impression created by them.
38 Even though the first two characters making up the mark applied for, namely, ‘f’ and ‘1’, are identical to the earlier word marks, the Board of Appeal correctly concluded that the relevant public would not perceive the mark applied for as being composed of two separate alphanumeric elements, but as a set of numbers and letters in which the element ‘F1’ does not stand out more than the element ‘H2O’, especially since that latter element will, in the relevant public’s mind, continue to refer to the chemical formula for water.
39 It must therefore be held, as the Board of Appeal did, that the length of the mark applied for and the equal position which the elements ‘F1’ and ‘H2O’ occupy in that mark imply a weak visual similarity between the marks at issue.
– The phonetic comparison
40 Phonetically, each letter and each number making up the mark applied for and those making up the earlier marks will be pronounced in all the languages of the relevant public. It follows that, given the difference in length and composition of the marks at issue, they will be pronounced differently in the languages in question. The fact that the start of the mark applied for is pronounced the same way as the earlier word marks is not sufficient to offset those differences. In addition, the difference between the lengths of the signs will be more striking phonetically than visually. It follows that the Board of Appeal correctly found that there was a weak phonetic similarity between the signs at issue.
– The conceptual comparison
41 It must be first held, as the Board of Appeal rightly did, that the earlier word marks are an abbreviation referring to the expression ‘Formula one’, which, for the relevant English-speaking public, signifies ‘the top class of professional motor racing’ according to an English reference dictionary. Similarly, for the relevant public in general, the element composed of the alphanumeric combination ‘F1’ is the term commonly used to designate a type of racing car and, by extension, the races contested by those vehicles. The mark applied for has no clear meaning, but will be perceived either as a sequence of letters and figures or as a chemical, or as an imaginary chemical, formula by the relevant public which lacks a basic knowledge of chemistry. The fact that the mark applied for contains the well-known chemical formula for water (‘H2O’) strengthens this conclusion. This is not contradictory, as the applicant claims, since the fact that consumers recognise the chemical formula for water does not prevent them from perceiving the mark applied for as a chemical formula of which water forms part.
42 Next, concerning the current use of the mark applied for and without there being any need to take a position on the admissibility of the evidence submitted for the first time before the Court in that regard, the fact remains that, given that the particular circumstances in which the goods and services in question were marketed may vary in time and depending on the wishes of the proprietors of the marks at issue, it is inappropriate to take those circumstances into account in the prospective analysis of the likelihood of confusion between those marks (see, to that effect, judgment of 15 March 2007 in T.I.M.E. ART v OHIM, ECR, C‑171/06 P, EU:C:2007:171, paragraph 59). Consequently, the argument based on the current use of the mark applied for must be rejected.
43 Accordingly, the Board of Appeal was entitled to conclude that the marks at issue were conceptually different.
44 Similarly, the Board of Appeal was legally entitled to conclude that the distinct meanings of the marks at issue counteracted their weak visual and phonetic similarities. According to settled case-law, when assessing a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, conceptual differences which distinguish the marks at issue may counteract to a large extent visual or phonetic similarities between those marks, on condition that at least one of the marks at issue has, in the perception of the relevant public, a clear and determinate meaning, so that the public in question may grasp it immediately, and on condition that the other mark has no such meaning or an entirely different meaning (see, to that effect, judgments in MUNDICOR, paragraph 37 above, EU:T:2004:79, paragraph 93; of 8 February 2007 in Quelle v OHIM-Nars Cosmetics (NARS), T‑88/05, EU:T:2007:45, paragraph 70; and of 16 October 2013 in Mundipharma v OHIM — AFT Pharmaceuticals (Maxigesic), T‑328/12, EU:T:2013:537, paragraph 63).
– Distinctive character and reputation
45 As the Court of Justice previously held in its judgment of 24 May 2012, Formula One Licensing v OHIM (C‑196/11 P, ECR, EU:C:2012:314, paragraph 47), it is necessary that a national mark be recognised as enjoying a certain degree of distinctiveness in order for it to be successfully invoked in support of an opposition to the registration of a Community trade mark. In this case, the earlier F1 word marks have a distinctive character for all the goods and services which they cover. Since, as was noted in paragraph 41 above, the word element ‘F1’ is the usual abbreviation of the term ‘Formula 1’, that element has weak intrinsic distinctive character in relation to the goods and services at issue. The element ‘F1’ is indeed likely to create a link in the mind of the relevant public between those goods and services and the field of motor racing.
46 As regards the alleged reputation of the earlier word marks, it is clear from the case file that the Board of Appeal was right to find that it related solely to the logotype version of the ‘F1’ word element. Therefore the argument that the Board of Appeal erred in its analysis of the evidence submitted to it must be rejected.
47 The argument that the Board of Appeal should have concluded that the earlier word marks had enhanced distinctiveness as a result of the use of those marks in combination with the earlier figurative marks does not affect that conclusion. Contrary to what the applicant claims, the present case is not comparable to the decisions on which the applicant relies, since in this particular case, the element composed of the alphanumeric combination ‘F1’ does not play a ‘predominant or even significant’ role in earlier figurative marks (see, to that effect, judgment of 7 September 2006 in L & D v OHIM–Sämann (Aire Limpio), T‑168/04, ECR, EU:T:2006:245, paragraph 76). The Board of Appeal was therefore correct in finding that the earlier word marks did not enjoy enhanced distinctiveness on the basis of evidence provided by the applicant. Accordingly, the Board of Appeal was legally entitled to conclude that the earlier word marks enjoyed neither a reputation nor enhanced distinctiveness, but had a weak level of distinctiveness.
– The likelihood of confusion
48 The global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the marks and the similarity of the goods or services concerned. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (judgments of 29 September 1998 in Canon, C‑39/97, ECR, EU:C:1998:442, paragraph 17, and 14 December 2006 in Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and Others), T‑81/03, T‑82/03 and T‑103/03, ECR, EU:T:2006:397, paragraph 74).
49 As stated in paragraph 39 above, there is a weak visual similarity between the marks at issue due to the fact that the mark applied for reproduced the element composed of the alphanumeric combination ‘F1’ of which the earlier word marks are composed. That weak visual similarity also contributes to a weak phonetic similarity between the marks at issue. However, the conceptual difference between the marks at issue offsets those weak similarities.
50 The distinctiveness of the earlier word marks does not help confer on those marks, or on the element of the mark applied for composed of the alphanumeric combination ‘F1’, a dominant character or independent distinctive character, inasmuch as the mark applied for is not broken down by the relevant public, but would be perceived by that public in its entirety. Moreover, the evidence provided by the applicant is not sufficient to demonstrate that the use conferred on the earlier word marks a sufficiently distinctive character to call that conclusion into question.
51 Consequently, the Board of Appeal was correct to conclude, in paragraphs 55 of the contested decision in particular, that no likelihood of confusion existed between the mark applied for and the earlier word marks, even in respect of those goods and services covered by the marks which were identical.
The comparison between the mark applied for and the earlier figurative marks
52 The earlier figurative marks F1 are composed of the letter ‘F’ in capital letters and italics, followed by the figure ‘1’ which itself is represented in an original typography with a series of fine horizontal lines that refer to an image of speed. The element ‘F1’ of the mark applied for is set out in a classic typography.
53 It is therefore necessary to consider, as the Board of Appeal did, that there is no visual similarity between the earlier figurative marks and the mark applied for. Furthermore, as was noted in relation to the earlier word marks, there is a weak phonetic similarity between the earlier figurative marks and the mark applied for. It must also be recalled that the marks at issue are different from a conceptual point of view for the same reasons as those set out in paragraphs 41 to 43 above.
54 The same reasoning applies to the earlier F1 Formula 1 figurative marks. The additional term ‘Formula 1’ is written in small print. This serves only to explain the abbreviation ‘F1’ and has no equivalent in the mark applied for. Therefore, it will contribute still more to the differences between the marks at issue.
55 Consequently, it must be held that there are no visual and conceptual similarities, but only a weak phonetic similarity, between the earlier figurative marks and the mark applied for.
56 As was held in paragraph 46 above, the distinctiveness of the earlier figurative marks emerges principally from their figurative elements and is not sufficiently clear from the element ‘F1’ which has only a weak distinctive character.
57 It follows that the Board of Appeal was correct to conclude that the earlier figurative marks and the mark applied for were not similar and that there was no likelihood of confusion between those marks.
58 Consequently, the first plea in law must be rejected as unfounded.
Second plea in law, alleging infringement of Article 8(5) of Regulation No 207/2009
59 The applicant claims that the conditions for applying Article 8(5) of Regulation No 207/2009 have been met. It claims that the Board of Appeal erred in finding that the earlier marks relied on in support of the opposition do not satisfy the conditions of Article 8(5) of Regulation No 207/2009, on the grounds that they did not enjoy a reputation within the meaning of that article. The applicant states that the evidence ‘clearly’ shows that the earlier F1 word marks and figurative marks F1 and F1 Formula 1 all enjoy the required reputation.
60 The applicant submits that the identical incorporation of the element composed of the alphanumeric combination ‘F1’ in the mark applied for ‘clearly’ shows the existence of a relevant link between the earlier word and figurative marks and the mark applied for, in the sense that the mark applied for will automatically bring to the relevant public’s mind the earlier word and figurative marks.
61 The applicant claims that the intervener incorporated the element composed of the alphanumeric combination ‘F1’ in the mark applied for in order to take advantage of the image and the reputation of the earlier figurative and word marks, without any recompense. The use of that mark would thus take unfair advantage of and be detrimental to the reputation and distinctive character of the earlier word and figurative marks.
62 In accordance with Article 8(5) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for is not to be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, where the trade mark has a reputation in the Member State concerned and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
63 For an earlier trade mark to be afforded the broader protection under Article 8(5) of Regulation No 207/2009, several conditions must, accordingly, be satisfied. First, the earlier mark must be registered. Second, that mark and the mark applied for must be identical or similar. Third, it must have a reputation in the Community, in the case of an earlier Community trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourth, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark. As those conditions are cumulative, failure to satisfy one of them is sufficient to render that provision inapplicable (judgments of 22 March 2007 in Sigla v OHIM — Elleni Holding (VIPS), T‑215/03, ECR, EU:T:2007:93, paragraphs 34 and 35, and of 11 July 2007 in Mülhens v OHIM–Minoronzoni (TOSCA BLU), T‑150/04, ECR, EU:T:2007:214, paragraphs 54 and 55).
The earlier word marks
64 As the Board of Appeal rightly pointed out in paragraphs 45 to 49 of the contested decision, the applicant has not been able to provide evidence demonstrating the reputation of the earlier word marks.
65 Accordingly, it must be considered that one of the conditions for the application of Article 8(5) of Regulation No 207/2009 has not been met, namely, proof of the reputation of the earlier word marks relied on, and thus that that provision is not applicable to those marks.
The earlier figurative marks
66 As was pointed out in paragraphs 53 and 54 above, the figurative marks F1 and the mark applied for are visually and conceptually different and have a weak phonetic similarity. In addition, it must be recalled, as was mentioned in paragraph 36 above, and as was found by the Board of Appeal in paragraph 82 of the contested decision, that the relevant public will not split the mark applied for into two distinct elements. That conclusion is valid even if the common element ‘F1’ enjoys a certain distinctive character.
67 Given these differences between the marks, the Court must uphold the Board of Appeal’s finding that the relevant public would not establish a link between the signs at issue. It follows that the application of Article 8(5) of Regulation No 207/2009 must be rejected, inasmuch as the marks at issue are not similar.
68 Finally, the application of that provision to the earlier figurative marks F1 Formula 1 must be rejected for the same reasons as those set out in paragraphs 66 and 67 above. Furthermore, the addition of the element ‘Formula 1’ will contribute still more to the differences between the marks at issue.
69 In view of the foregoing, the second plea, alleging infringement of Article 8(5) of Regulation No 207/2009, must be rejected as unfounded and, therefore, the action in its entirety must be dismissed.
Costs
70 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.
71 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM and the intervener.
On those grounds,
THE GENERAL COURT (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders Formula One Licensing BV to bear its own costs and to pay those incurred by the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) and by Idea Marketing SA.
Delivered in open court in Luxembourg on 21 May 2015.
[Signatures]