JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
14 November 2012 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark Impulso creador – Earlier figurative Community mark IMPULSO – Relative ground for refusal – Likelihood of confusion – Similarity of signs – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑529/11,
Evonik Industries AG, established in Essen (Germany), represented by J. Albrecht, lawyer,
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Bullock, acting as Agent,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Impulso Industrial Alternativo, SA, established in Madrid (Spain), represented by F. Brandolini Kujman and J. Devaureix, lawyers,
ACTION brought against the decision of the Second Board of Appeal of OHIM of 20 June 2011 (Case R 1101/2010‑2), concerning opposition proceedings between Impulso Industrial Alternativo, SA and Evonik Industries AG,
THE GENERAL COURT (Sixth Chamber),
composed of H. Kanninen, President, N. Wahl (Rapporteur) and G. Berardis, Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Registry of the General Court on 29 September 2011,
having regard to the response of OHIM lodged at the Registry of the Court on 6 February 2012,
having regard to the response of the intervener lodged at the Registry of the Court on 22 February 2012,
having regard to the decision of 19 April 2012 refusing leave to lodge a reply,
having regard to the absence of an application to have a hearing lodged by the parties in a period of one month from notification of closure of the written procedure and, acting upon a report of the Judge-Rapporteur and pursuant to Article 135a of the Rules of Procedure of the General Court, having decided to rule on the action without an oral procedure,
gives the following
Background to the dispute
1 On 27 July 2007, the applicant, Evonik Industries AG, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 The mark for which registration was sought is the word mark ‘Impulso creador’.
3 The services in respect of which registration was sought fall, inter alia, within Classes 35, 36 and 42 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 35: ‘Advertising; business management; business administration and organisational project development; professional business consultancy for power station disposal and residual material disposal, for waste incineration installations; office functions; statistics (compilation of -); accounting, auctioneering; business research; marketing, market research and market analysis; business consultancy or organisation consultancy; business consultancy and advisory services; personnel management consultancy; office machines and equipment rental; arranging commercial transactions for others; arranging contracts for the buying and selling of goods for others; document reproduction services; fairs and shows arrangements for cultural and/or advertising purposes; arranging of contracts with electricity suppliers’;
– Class 36: ‘Insurance and finance; monetary affairs; real-estate and housing management; real-estate and mortgage negotiation; leasing, real estate appraisal; arranging of insurance; financial management; renting of flats; financial consultancy with regard to business start-ups’;
– Class 37: ‘Building construction; installation construction in the fields of clean room, air conditioning, energy, heating and/or environmental technology; heating construction; glazing; structural and civil engineering; road building, tunnelling construction; hydraulic engineering; building of factories; insulation construction’;
– Class 42: ‘Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; technical consultancy; providing of expert opinion; construction and design planning and consultancy; materials testing; chemical and physical analysis of waste and residual materials from waste incineration installations, power stations and/or water treatment installations; architecture; chemistry services; engineering services; bacteriological or chemical laboratory services; physics research; computer programming; leasing of data-processing installations’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 25/2008, of 23 June 2008.
5 On 13 August 2008, the intervener, Impulso Industrial Alternativo, SA, filed a notice of opposition under Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) to registration of the mark applied for in respect of the services referred to in paragraph 3 above.
6 The opposition was based on a number of earlier rights, including the Community figurative mark IMPULSO, registered on 20 April 2007 under number 4438206, reproduced below:
7 The services covered by the earlier mark forming the basis of the opposition fall within Classes 35 and 42 and correspond, for each of those classes, to the following description:
– Class 35: ‘Business management, business administration, information, assistance and market research (searching), and business organisation and management consultancy, employment and accounting consultancy; all of these services regarding with engineering, industrial analyses and research, scientific and technological services and research and design relating thereto, services provided by engineers dealing with appraisals, surveys, valuations, research and reports’;
– Class 42: ‘Engineering, industrial analysis and research, scientific and technological services and research and design relating thereto, services provided by engineers dealing with appraisals, surveys, valuations, research and reports’.
8 The ground relied on in support of the opposition was that specified in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
9 On 21 April 2010, the Opposition Division upheld the opposition in part on the ground that, in essence, there was a likelihood of confusion between the marks at issue for some of the services in question.
10 On 17 June 2010, the applicant filed a notice of appeal at OHIM, pursuant to Articles 58 to 64 of Regulation No 207/2009, against the Opposition Division’s decision, in so far as it allowed the opposition and rejected the application for registration.
11 By decision of 20 June 2011 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal. In particular, it found that the marks at issue were visually similar, at least to a slight degree, and phonetically and conceptually similar for consumers perceiving the meaning of the word ‘impulso’. For other consumers, it found that the signs at issue were not comparable, conceptually speaking. Since the services covered by the action were held to be partially identical and partially similar, the Board of Appeal held that, despite the high level of attentiveness on the part of the relevant public, there was a likelihood of confusion between the signs at issue.
Forms of order sought
12 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
13 OHIM contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
14 The intervener claims that the Court should:
– hold its response and all annexed documents and corresponding copies to be admissible;
– hold all evidence annexed to its response to be admissible;
– dismiss the action;
– order the applicant to pay the costs.
15 In support of its action, the applicant relies on a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 207/2009.
16 It argues, in essence, that the Board of Appeal made an incorrect assessment of the overall impression given by each of the marks at issue. The fact that the word element ‘impulso’, which is part of the earlier mark, is reproduced identically in the mark applied for does not lead to the conclusion that there is a similarity and, therefore, a likelihood of confusion between those marks on the part of the relevant public. In the applicant’s submission, there are notable visual, phonetic and conceptual differences between those marks. The applicant argues that the contested decision is based on an incorrect understanding of the judgment in Case C‑120/04 Medion  ECR I‑8551, and amounts to granting excessive protection to marks bearing only a slight degree of distinctiveness.
17 Under Article 8(1)(b) of Regulation No 207/2009, 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 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.
18 In accordance with settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. According to the same line of authority, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and the goods or services concerned, and account being taken of all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services designated (see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS)  ECR II‑2821, paragraphs 30 to 33 and the case-law cited).
19 For the purposes of applying Article 8(1)(b) of Regulation No 40/94, a likelihood of confusion presupposes both that the marks at issue 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)  ECR II‑43, paragraph 42 and the case-law cited).
20 Where the protection of the earlier trade mark extends to the entirety of the European Union, it is necessary to take into account the perception of the marks in dispute by the consumer of the goods or services in question in that territory. However, it should be noted 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 40/94 exists in part of the European Union (see, to that effect, Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others)  ECR II‑5409, paragraph 76 and the case-law cited).
The relevant public and comparison of the sevices
21 The applicant does not dispute the definition of the relevant public endorsed by the Board of Appeal in paragraph 21 of the contested decision. It is thus common ground amongst the parties that the relevant public is made up of professionals in the sector concerned having a high level of attentiveness on account of the specialisation of the services concerned.
22 Nor do the parties dispute the Board of Appeal’s finding that the services covered by the marks in question are partially identical and partially similar.
Comparison of the signs
23 It is established case-law that 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, namely the visual, phonetic and conceptual aspects (Case T‑6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN)  ECR II‑4335, paragraph 30, and judgment of 8 September 2010 in Case T‑369/09 Quinta do Portal v OHIM – Vallegre (PORTO ALEGRE), not published in the ECR, paragraph 21).
24 The global assessment of the likelihood of confusion, in relation to the visual, aural 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 appreciation of such likelihood of confusion. In this regard, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (see Case C‑334/05 P OHIM v Shaker  ECR I‑4529, paragraph 35 and the case-law cited).
25 The assessment of the similarity between two marks means more than merely 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 at issue 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 24 above, 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 24 above, 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 keep in their minds, so that all the other components are negligible in the overall impression created by that mark (Nestlé v OHIM, paragraph 43).
26 It is in the light of those considerations that an assessment must be made of whether there is a similarity between the marks in question.
27 As regards, first of all, the visual comparison, the Board of Appeal was correct in finding, in paragraph 31 of the contested decision, that the ‘marks [were] visually similar at least to a low degree’. It should be noted that the signs in question, although composed of a different number of words, have in common the word element ‘impulso’, which leads to the conclusion that they are at least partially identical. As correctly observed by the Board of Appeal in paragraphs 30 and 31 of the contested decision, that partially identical nature is all the more notable at the beginning of each of the signs in question. The consumer normally attaches more importance to the first part of signs (see, to that effect, Case T‑133/05 Meric v OHIM – Arbora & Ausonia (PAM-PIM’S BABY-PROP)  ECR II‑2737, paragraph 51). In the present case, the word ‘creador’, which is the second word element of the mark applied for, is less likely to draw attention than the word ‘impulso’.
28 The fact, emphasised by the applicant, that, on the one hand, the earlier mark relied on in support of the opposition has a figurative aspect, unlike the mark in respect of which registration is sought, and, on the other, the mark in respect of which registration is sought has a second word element, is not such as to invalidate the Board of Appeal’s finding on the visual similarity of the signs at issue.
29 As regards the presence of figurative elements in the earlier mark, it is clear that in their size and originality, for example, there is nothing particularly inventive or striking about them such as to eclipse the common element ‘impulso’ and thereby have a notable impact on the overall visual impression given by the sign in question. Contrary to the applicant’s submissions, the graphic elements contained in the earlier mark have at least a comparable impact to the word element. Moreover, the Board of Appeal was correct in referring to the case-law on the point, which is to the effect that where a trade mark is composed of verbal and figurative elements, the former should, in principle, be considered more distinctive than the latter, because the average consumer will more easily refer to the goods in question by quoting their name than by describing the figurative element of the trade mark (see Case T‑205/06 NewSoft Technology v OHIM – Soft (Presto! Bizcard Reader), judgment of 22 May 2008, not published in the ECR, paragraph 54 and the case-law cited). In the present case, the Board of Appeal did not err in stating that the possibility could not be ruled out that part of the relevant public might perceive the figurative elements of the earlier mark as a decorative component referring to the word element ‘impulso’ and not as an element indicating the commercial origin of the services.
30 Nor is the addition in the mark in respect of which registration is sought of the word element ‘creador’ such as to displace the presence of the word ‘impulso’ at the beginning of the sign (see paragraph 27 above).
31 Next, as regards the phonetic comparison, it is undeniable that, because of the presence of the word ‘impulso’ in both of the signs at issue, they are partially identical, a similarity which is all the more notable because it is at the beginning of each sign. However, although the additional word element of the mark applied for, namely the word ‘creador’, introduces a certain difference between the marks at issue, that difference is negligible from a phonetic point of view. That word is clearly detached, in the earlier mark, from the identical element found in the marks at issue, since there is a break before that word is spoken. The way that it is spoken does not therefore have an appreciable phonetic impact and does not affect the fact that the sole element of the earlier mark and the first element of the mark applied for sound identical. The Board of Appeal was therefore correct in finding, in paragraph 30 of the contested decision, that the signs in question were phonetically similar in so far as the pronunciation of the first word element of the mark applied for was identical to the pronunciation of the sole word element of the earlier mark.
32 It follows from all the aforegoing considerations that, irrespective of the answer to the question whether the word ‘impulso’ must be considered to be the dominant element of the marks in question, they are similar from an overall visual and phonetic perspective.
33 Lastly, from a conceptual standpoint, OHIM was correct in finding, in paragraph 32 of the contested decision, that, for those consumers who understand the word ‘impulso’, the marks in question will be conceptually similar since both marks convey in part the same concept, whilst for other consumers, the marks cannot be compared from a conceptual point of view.
34 The applicant’s argument to the effect that the expression ‘impulso creador’ will be perceived by some consumers, namely those who understand the meaning of those two words, as a slogan, cannot be upheld. Although it is true, as the applicant maintains, that a small number of the consumers targeted may perceive the meaning of that expression as referring to ‘creative energy’, the fact remains that, as evidenced by paragraph 20 of the contested decision, for a considerable portion of the relevant public, which is made up of all consumers in the European Union, the sign applied for carries no particular meaning.
35 Similarly, nor is the applicant’s assertion that consumers will tend to concentrate more on the word element ‘creador’ rather than on the word ‘impulso’ which makes up the mark applied for, since the latter is widely used by numerous undertakings in the relevant sector, convincing. Irrespective of the question whether the word ‘creador’ has a higher degree of distinctiveness than the word ‘impulso’, it is undeniable that, for that part of the public which understands the meaning of the words in question, the sole element making up the earlier mark and the first part of the mark applied for refer to the same concept.
36 In conclusion, the Court finds that the Board of Appeal made a correct assessment of the similarity of the signs.
The likelihood of confusion
37 In the present case, it has been held that the services concerned were partially identical and partially similar (see paragraph 22 above). It has also been held that the Board of Appeal found correctly that the signs at issue are similar from an overall perspective.
38 In the circumstances of the present case, therefore, the Board of Appeal was correct in finding, in paragraph 39 of the contested decision, that there was a likelihood of confusion between the signs at issue in respect of all the services concerned and that that likelihood of confusion was not overcome by the high attentiveness of the relevant public.
39 This conclusion is not affected by the applicant’s assertion that, given the conditions under which the services covered are present in the market, the visual, phonetic and conceptual aspects of the signs at issue should not have been given the same weight in the overall assessment of whether there was a likelihood of confusion. As observed by the Board of Appeal in paragraph 37 of the contested decision, although it is true that one of those aspects may prevail over the others, the applicant has failed to substantiate its assertion with arguments or evidence showing how the services in question are offered or acquired. In any event, the applicant has failed to show how attaching the slightest importance to the phonetic aspect of the signs in question influenced the overall assessment of the likelihood of confusion.
40 Nor can the argument be accepted that the approach taken by the Board of Appeal amounts to granting excessive protection to marks bearing a low degree of distinctiveness, in disregard of the Court of Justice’s case-law, in particular Medion, referred to above. Referring to paragraph 32 of that judgment, the Board of Appeal merely observed that ‘the finding that there is a likelihood of confusion should not be subject to the condition that the overall impression produced by the composite sign be dominated by the part of it which is represented by the earlier mark’. In the present case, it found, first, that the word ‘impulso’ and the word ‘creador’ each had independent distinctiveness within the whole sign applied for; second, that the distinctiveness of those words was average; and, third, that the word ‘impulso’, because of its verbal nature and position, could be perceived as the dominant element of the signs at issue. It cannot be said that those findings amount to granting excessive protection to the proprietor of the earlier mark.
41 As the sole plea put forward is unfounded, it must be rejected and the action must therefore be dismissed in its entirety.
42 Under Article 87(2) of the Rules of Procedure of the Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. 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 (Sixth Chamber)
1. Dismisses the action;
2. Orders Evonik Industries AG to pay the costs.
Delivered in open court in Luxembourg on 14 November 2012.