JUDGMENT OF THE GENERAL COURT (Sixth Chamber)
21 March 2013 (*)
(Community trade mark–Opposition proceedings– Application for Community figurative mark eventer EVENT MANAGEMENT SYSTEMS – Earlier national word mark Event – Relative ground for refusal – Likelihood of confusion– Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑353/11,
Event Holding GmbH & Co. KG, established in Cologne (Germany), represented by G. Schoenen and V. Töbelmann, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by P. Geroulakos, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
CBT Comunicación Multimedia, SL, established in Getxo (Spain),
Action brought against the decision of the Second Board of Appeal of OHIM of 29 March 2011 (Case R 939/2010-2), relating to opposition proceedings between Event Holding GmbH & Co. KG and CBT Comunicación Multimedia, SL,
THE GENERAL COURT (Sixth Chamber),
composed of H. Kanninen, President, S. Soldevila Fragoso (Rapporteur) and M. Kancheva, Judges,
Registrar: T. Weiler, Administrator,
having regard to the application lodged at the Registry of the General Court on 29 June 2011,
having regard to the response lodged at the Court Registry on 20 October 2011,
having regard to the decision of 6 December 2011 refusing leave to lodge a reply,
having regard to the designation of another judge to complete the Chamber because one of its Members was prevented from attending,
having regard to the written questions put to the parties by the Court,
further to the hearing on 10 January 2013,
gives the following
Judgment
1 On 4 December 2007, CBT Comunicación Multimedia, SL 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 Registration as a mark was sought for the following figurative sign:
3 The services in respect of which registration was sought are, inter alia, in Classes 35 and 41 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose 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; office functions; organisation and conducting of exhibitions and events for commercial or advertising purposes; publication of publicity texts; wholesaling, commercial retailing and selling via global computer networks of computer hardware and software’;
– Class 41: ‘Education; providing of training; entertainment; sporting and cultural activities; arranging and conducting of congresses, seminars, symposia and conferences; arranging and conducting of exhibitions and events for cultural or educational purposes; organisation and conducting of exhibitions and amusement and sports events; publication of texts (apart from advertising)’.
4 The Community trade mark application was published in Community Trade Marks Bulletin No 19/2008 of 13 May 2008. In the English version of that publication, the last category of services in Class 41 was incorrectly translated as ‘providing of training, including through international computer networks’.
5 On 8 August 2008, the applicant, Event Holding GmbH & Co. KG, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the mark applied for in respect of the services referred to in paragraph 3 above. The applicant relied on the English version of the services at issue and therefore, in its opposition, referred to the services of ‘providing of training, including through international computer networks’, and not ‘publication of texts (apart from advertising)’.
6 The opposition was based on the earlier German word mark Event, which was filed on 24 November 1995 and registered on 13 February 1996 under the number 39548073.6, and designates inter alia services which are, according to the applicant, in Class 43 and correspond to the following description: ‘development of hotels, hotels, restaurant services, temporary accommodation’.
7 The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
8 On 23 March 2010, the Opposition Division rejected the opposition on the ground that the services covered by the marks at issue were dissimilar, with the result that one of the conditions necessary for there to be a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009, namely, the identity or similarity of the services covered by the two marks, was not satisfied. The Opposition Division did not point out the translation error, noted in paragraph 4 above, concerning the last category of services covered by the mark applied for and within Class 41.
9 On 25 May 2010, 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 its Decision of March 29, 2011 (‘the contested decision’), the Second Board of Appeal dismissed the appeal and ordered the applicant to pay the costs. In particular, the Board of Appeal found that:
– The service of ‘development of hotels’, covered by the earlier mark, fell within Class 35, and not Class 43;
– the relevant public consisted, in respect of some of the services at issue, of German professionals whose level of attention is high, and, in respect of the other services at issue, of the German general public;
– the services at issue were not all dissimilar, as the Opposition Division found, as there was a similarity between the ‘business management; business administration’ services covered by the mark applied for and the ‘development of hotels’ services covered by the earlier mark;
– the signs at issue were visually similar to a low degree, similar phonetically and conceptually, although the conceptual similarity was of little relevance;
– there was no likelihood of confusion, even in respect of the services which are similar, given the high degree of attention of the relevant public in relation to those services, the low degree of distinctive character of the earlier mark, the insufficient degree of similarity between the signs at issue and the unusual nature of the element ‘eventer’ in the mark applied for.
11 Like the Opposition Division, the Board of Appeal did not point out the translation error, noted in paragraph 4 above, concerning the last category of services covered by the mark applied for and within Class 41.
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.
Law
The subject-matter of the dispute
14 First of all, it should be noted that, under Article 120 of Regulation No 207/2009:
‘(1) An application for a Community trade mark … and all other information the publication of which is prescribed by this Regulation or the Implementing Regulation, shall be published in all the official languages of the European Community.
…
(3) In cases of doubt, the text in the language of the Office in which the application for the Community trade mark was filed shall be authentic … .’
15 At the hearing, in answer to a written question from the General Court by way of measures of organisation of the procedure under Article 64 of its Rules of Procedure, the parties acknowledged the existence of a translation error in the English version of the Community trade mark application. It is therefore necessary, in accordance with Article 120(3) of Regulation No 207/2009, to take into account the version in which the application for the Community trade mark was filed, that is to say, the Spanish version.
16 Accordingly, in the present case, the ‘providing of training, including through international computer networks’ services, which do not appear in the Spanish version of the publication of the application for a Community trade mark in the Community Trade Marks Bulletin, cannot be considered to be affected by the opposition filed by the applicant.
17 Likewise, the ‘publication of texts (apart from advertising)’ services cannot be considered to be affected by the opposition filed by the applicant, since it did not refer to them.
18 In those circumstances, it must be concluded that neither the services of ‘publication of texts (apart from advertising)’ nor those of ‘providing of training, including through international computer networks’ are affected by the subject-matter of the present dispute.
19 Secondly, it must be observed that, at the hearing, in answer to a written question from the General Court, the parties confirmed that the earlier mark had been registered inter alia for the ‘Betrieb von Hotels’ (operation of hotels) services and that the references in the contested decision to the ‘hotels’ services should be understood as having the same meaning as the ‘operation of hotels’ services. In that regard, the parties also confirmed that that inaccuracy in the contested decision does not affect the subject-matter of the present dispute.
Admissibility of Annexes A.2 and A.3 to the application
20 In Annexes A.2 and A.3 to the application, the applicant has provided, first, Internet print-outs to further support its argument that the ‘operation of hotels’ services covered by the earlier mark are similar to a number of services covered by the mark applied for and, secondly, extracts from decisions of the Bundespatentgericht (German Federal Patents Court) which acknowledged the existence of a similarity in the case of services comparable to those at issue in the present case.
21 OHIM contends that those annexes are inadmissible on the ground that they were submitted for the first time before the Court. At the hearing, OHIM claimed, in answer to a written question from the Court, that Annex A.3 to the application should be declared to be inadmissible notwithstanding the case-law flowing from the judgment in Case T-270/06 Lego Juris v OHIM – Mega Brands (Red Lego brick) [2008] ECR II-3117, paragraph 24).
22 With regard to the documents submitted as Annex A.2, it must be noted that those documents, produced for the first time before the Court, cannot be taken into consideration. Even if it concerned merely an amplification of the arguments and evidence already submitted before OHIM, the fact remains that an action before the Court seeks review of the legality of decisions of the Boards of Appeal of OHIM for the purposes of Article 65 of Regulation No 207/2009. It follows from that provision that facts not submitted by the parties before the departments of OHIM may not be submitted at the stage of the appeal brought before the Court (see, to that effect, the order of 9 July 2010 in Case C-461/09 P Wellcome Foundation v OHIM, not published in the ECR, paragraphs 24 to 26; and Case T‑346/04 Sadas v OHIM – LTJ Diffusion (ARTHUR ET FELICIE) [2005] ECR II‑4891, paragraph 19).
23 With regard, on the other hand, to the documents submitted as Annex A.3, it should be noted that, although they were produced for the first time before the Court, they do not serve as evidence in the narrow sense, but concern national case-law to which, even where it comes after the procedure before OHIM, a party is entitled to refer (ARTHUR ET FELICIE, paragraph 20; and Case T‑29/04 Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH) [2005] ECR II‑5309, paragraph 16). Neither the parties nor the Court itself can be precluded from drawing on national case-law for the purposes of interpreting European Union law. That possibility of referring to national judgments is not covered by the case-law according to which the action before the Court seeks review of the legality of decisions of the Boards of Appeal in the light of evidence submitted by the parties before the latter, where the plea is not that the Boards of Appeal failed to take the factual aspects of a specific national judgment into account, but to cite judgments in support of a plea alleging that the Boards of Appeal infringed a provision of Regulation No 207/2009 (see Red Lego brick, paragraph 24, and the case-law cited).
24 It follows that Annex A.2 must be disregarded as inadmissible whereas Annex A.3 is admissible to the extent that the German case-law included in it may be useful in the present case for the purposes of interpreting Article 8(1)(b) of Regulation No 207/2009.
Substance
25 In support of its action, the applicant relies on a single plea in law, alleging breach of Article 8(1)(b) of Regulation No 207/2009. It disputes the assessments made by the Board of Appeal as regards the definition of the relevant public, the similarity of the services, the similarity of the signs and the global assessment of the likelihood of confusion.
26 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the mark applied for is not to be registered if, because of its identity with, or similarity to, that 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)(ii) of Regulation No 207/2009, the term ‘earlier trade marks’ is to be understood as meaning trade marks registered in a Member State, with a date of application for registration which is earlier than the date of application for registration of the Community trade mark.
27 According to established 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 that same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services concerned, and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see 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).
The relevant public
28 The applicant claims that the services covered by the earlier mark and a number of services covered by the mark applied for target the general public, and not professionals.
29 According to the case-law, in the global assessment of the likelihood of confusion, it is necessary to take into account the average consumer of the category of services concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of services in question (see Case T-256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II-449, paragraph 42, and the case-law cited).
30 Moreover, it must be noted that the relevant public is made up of persons likely to use both the services of the earlier mark and those of the mark applied for (see, to that effect, Case T-328/05 Apple Computer v OHIM – TKS-Teknosoft (QUARTZ) [2008] ECR II-0000, paragraph 23; and Case T-270/09 PVS v OHIM – MeDiTA Medizinische Kurierdienst (medidata) [2010] ECR II-0000, paragraph 28).
31 In paragraph 14 of the contested decision, first, the Board of Appeal, in essence, held that the relevant public consisted:
– as regards, first, all the services in Class 35 and the services relating to arranging and conducting exhibitions, in Class 41, covered by the mark applied for, and, secondly, ‘development of hotels’, in Class 35, covered by the earlier mark, of professionals with a high level of attention;
– as regards the other services covered by the marks at issue, of the general public, reasonably well informed and reasonably observant and circumspect.
32 Secondly, the Board of Appeal pointed out that the relevant territory was Germany, since the earlier mark was a German mark.
33 It should be noted, first, that the ‘development of hotels’ services target entrepreneurs wishing to undertake the significant investments involved in that activity.
34 Secondly, concerning the ‘business management; business administration; office functions’ services, covered by the mark applied for, apart from the fact that the applicant does not raise any arguments concerning them specifically, it must be noted that such services are used by entrepreneurs or by persons engaged in a liberal profession. Furthermore, it is apparent from the case-law that those services, which are intended principally to provide assistance in the operation or management of an industrial or commercial undertaking (see, to that effect, medidata, paragraph 51), are generally provided by specialised undertakings, whose main aim is to gather information and offer the necessary tools and expertise so as to enable their clients, who are themselves professionals, to carry out their activities or provide undertakings with the support necessary to their development and increase their market share (see, to that effect, Case T-304/10 dm-drogerie markt v OHIM – Semtee (caldea) [2011] not published in the ECR, paragraph 25).
35 Third, concerning the organisation and conducting of exhibitions and events services, whether for commercial or advertising purposes (Class 35) or for cultural, educational, amusement and sports purposes (Class 41), it is true that, as the applicant notes, the general public can take part in such events. However, as OHIM correctly points out, the fact that the general public attends an exhibition or event does not imply that it organises or conducts them. Those activities are, on the contrary, performed by professionals, who are the sole potential or actual clients of the services at issue, covered by the mark applied for and offered by the applicant for that mark. It is the clients of those undertakings, whose goods are offered for sale in the context of the exhibition or event, who could be members of the general public. Furthermore, on the assumption that an exhibition or event is organised by the undertaking itself whose goods are offered for sale, the organisation at issue would not be a service covered by the mark applied for, namely, organisation services which an undertaking offers to a third party, but merely an internal activity.
36 Fourth, concerning the ‘advertising’ and ‘publication of publicity texts’ services in Class 35, leaving aside the fact that the applicant does not put forward any arguments to substantiate its claim that they do not target professionals, but the general public, reasoning analogous to that set out in paragraph 35 above must be applied. Even if the general public were covered by the advertising message designed by the applicant for the Community trade mark at issue and concerning the goods or services of other undertakings, it remains the case that the services offered by the applicant for that mark target those undertakings, and not the general public.
37 Fifth, concerning the other services in Class 35, namely, those of ‘wholesaling, commercial retailing and selling via global computer networks of computer hardware and software’, it should be noted that those services are normally used by professionals who create computer hardware or produce computer software and who wish to offer them for sale.
38 It follows from the above that the definition of the relevant public provided by the Board of Appeal and summarised in paragraphs 31 and 32 above must be confirmed, as far as concerns the services in the light of which the Court must give judgment.
39 That conclusion is not called into question by the case-law flowing from the judgment in Case T-100/06 Rajani v OHIM – Artoz-Papier (ATOZ) [2008], not published in the ECR), relied on by the applicant in its application for authorisation to lodge a reply. On that occasion, the applicant claimed that that case-law precluded a finding that the relevant public for the services in Class 35 and for the ‘organisation and conducting of exhibitions’ services, in Class 41, consists of professionals. However, in paragraph 58 of that judgment, the Court held that, for services in those classes, the relevant public was both the average consumer and professionals, the latter potentially having a level of attention higher than average. In the assessment of the likelihood of confusion, it has not been necessary for the Court to specify which services, amongst those at issue, potentially target only the average consumer or only professionals, in view of the fact that the existence of that likelihood stemmed from the great similarity of the signs at issue and the identical nature of the services concerned. It follows that that judgment is not inconsistent with the definition of the relevant public provided in the present case by the Board of Appeal.
The similarity of the services
40 According to established case-law, in assessing the similarity between the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account such as the distribution channels of the goods concerned (see Case T‑443/05 El Corte Inglés v OHIM – Bolaños Sabri (PiraÑAM diseño original Juan Bolaños) [2007] ECR II-2579, paragraph 37 and the case-law cited).
41 In paragraphs 16 to 22 of the contested decision, the Board of Appeal held that the services covered by the marks at issue were different, with the exception of the ‘business management; business administration’ services, covered by the mark applied for, and the ‘development of hotels’ services, covered by the earlier mark, which should be held to be similar.
42 First, the applicant claims that the ‘business management; business administration’ services, covered by the mark applied for, and the ‘development of hotels’ services, covered by the earlier mark, are not merely similar, as the Board of Appeal found, but identical, since the second could be included in the first, which are defined in very general terms.
43 At the hearing, OHIM claimed that that argument was inadmissible, since, before the Board of Appeal, the applicant restricted itself to claiming that the services referred to in paragraph 42 above were similar, and not identical, which the applicant confirmed.
44 However, without there being any need to rule on the admissibility of that argument, it should be noted that, according to the case-law, where the services covered by the earlier mark include the services covered by the trade mark application, those services are considered to be identical (see ARTHUR ET FELICIE, paragraph 34, and the case-law cited). However, as rightly pointed out by OHIM, it must be noted that, in the present case, there is a degree of overlapping between the ‘development of hotels’ services, on the one hand, and ‘business management; business administration’ services, on the other, but that they do not fully cover the same field. In effect, the word ‘development’ refers to a process of growth, unlike the idea of management. It is also appropriate to uphold the Board of Appeal’s finding, in paragraph 16 of the contested decision, that those services are similar but not identical.
45 Secondly, the applicant claims that the ‘office functions’ services, covered by the mark applied for, and the ‘operation of hotels’ services, covered by the earlier mark, are similar, since the latter also involve traditional office functions.
46 In that regard, it must be pointed out, first, that the ‘operation of hotels’ involves mainly services, such as the reception, cleaning, the stocking and supply of food and drinks, which are different from typical office functions, as OHIM correctly noted.
47 Secondly, although the development and operation of hotels involves also typical office functions, it is nevertheless the case that, within hotels, those services are usually performed by the hotel staff, and not by third parties, such as the applicant for the Community trade mark at issue. Furthermore, hotels usually do not offer office services to other undertakings.
48 Therefore, it is necessary to uphold the assessment of the Board of Appeal, in paragraph 17 of the contested decision, according to which, inter alia, the ‘office functions’ and ‘operation of hotels’ services are different on the ground that they generally have different origins and target different publics.
49 Third, the applicant claims that the other services of ‘advertising; organisation and conducting of exhibitions and events for commercial or advertising purposes; publication of publicity texts’, covered by the mark applied for and in Class 35, and the services covered by the earlier mark are similar. On the one hand, the operators of the hotels could be involved in the publicity and business development of those hotels and, on the other, the organisation of exhibitions and events for commercial or advertising purposes could cover travel, the hotel industry or hotel developers.
50 By this argument, the applicant considers, in essence, that the services at issue are complementary. In that regard, it should be noted that, according to the case-law, goods or services which have a close connection are complementary, in the sense that one is indispensable to, or important for, the use of the other in such a way that consumers may think that the responsibility for the production of those goods or provision of those services lies with the same undertaking. By definition, services intended for different publics cannot be complementary (see Case T‑316/07 Commercy v OHIM – easyGroup IP Licensing (easyHotel) [2009] ECR II‑43, paragraphs 57 and 58, and the case-law cited).
51 In the present case, the services at issue covered by the mark applied for are aimed at entrepreneurs who wish to promote their goods or services amongst the public which is potentially interested in those goods or services. It is those undertakings, and not that public, which are the recipients of the services at issue covered by the mark applied for. On the other hand, as regards the services covered by the earlier mark, it should be noted, first, that the operation of hotels, although involving the promotion of hotels and the activities they offer, remains an activity internal to each hotel and does not target third party undertakings. Secondly, while it is true that, during publicity events, restaurant or accommodation services can be provided, the connection between those services and the services relating to the organisation of those events cannot, nevertheless, be considered so close that those services can be treated as complementary within the meaning of the case-law noted in the paragraph above.
52 Therefore, it is necessary to uphold the assessment of the Board of Appeal, in paragraph 17 of the contested decision, that the ‘advertising; organisation and conducting of exhibitions and events for commercial or advertising purposes; publication of publicity texts’ services, on the one hand, and the services covered by the earlier mark, on the other, are different.
53 Fourth, the applicant claims, in essence, that the ‘education; providing of training; entertainment; sporting and cultural activities; arranging and conducting of congresses, seminars, symposia and conferences; arranging and conducting of exhibitions and events for cultural or educational purposes; organisation and conducting of exhibitions and amusement and sports events’ services, covered by the mark applied for, and the ‘restaurant and accommodation’ services, covered by the earlier mark, are similar. In effect, the restaurants and hotels organise and offer cultural or sporting activities and the organisers of those activities offer food and drinks to the participants, as is shown by the evidence produced by the applicant before OHIM and before the Court.
54 In that regard, it should be noted, first, that, while it is true that the hotels can offer entertainment, sporting and cultural activities, it is nevertheless the case, as the Board of Appeal correctly pointed out in paragraph 21 of the contested decision, that, in the majority of cases those services are provided by separate undertakings which have commercial links with those hotels. In any event, although some hotels organise those activities themselves, they usually target the customers of those hotels. By contrast, the services at issue covered by the mark applied for usually target undertakings which wish to provide those activities to the general public. As a result of that difference between the recipients of the services at issue covered by the contested marks, they cannot be considered to be complementary, for the purposes of the case-law referred to in paragraph 50 above.
55 Secondly, while it is true that activities of training or education, congresses, seminars, symposia, conferences, exhibitions and events for cultural, educational, sporting or amusement purposes can be organised in the hotels, it is nevertheless the case that the managers of those hotels usually restrict themselves to hiring out their premises and do not take on the organisation of those activities, as was underlined by the Board of Appeal in paragraph 20 of the contested decision. Furthermore, while, during those activities, a restaurant service can be provided by the hotel where they take place, such services are nevertheless merely accessory to those covered by the mark applied for, and not complementary services within the meaning of the case-law, as was correctly noted by OHIM. In effect, the organisation of those activities is neither essential to, nor important for, the offer of temporary accommodation or for the provision of food and drinks and vice versa.
56 Consequently, it is necessary to uphold the assessment of the Board of Appeal, in paragraph 19 of the contested decision, that the services covered by the earlier mark and those covered by the mark applied for, referred to in paragraph 53 above, are different.
57 It follows from the above that, as the Board of Appeal correctly held, the services at issue are not similar, with the exception of the ‘development of hotels’ services covered by the earlier mark, and ‘services of business management; business administration’, covered by the mark applied for.
58 Regarding the applicant’s argument, derived from the case-law of the Bundespatentgericht, that the latter regularly found a similarity between the ‘entertainment; sporting and cultural activities’ services, on the one hand, and the ‘restaurant and accommodation’ services, on the other, it should be noted 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. Consequently, the question whether a sign may be registered as a Community trade mark must be assessed solely on the basis of the relevant regulation. Therefore, neither OHIM nor, as the case may be, the Courts of the European Union are bound – even if they may take them into consideration – by decisions adopted in a Member State, especially decisions finding the sign to be registrable, and that even in a situation where the decisions were adopted under national legislation harmonised with the First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1), or in a country belonging to the linguistic area in which the word sign in question originated. Consequently, a national decision cannot in any event call into question the lawfulness of the contested decision (see Case T-552/10 riha v OHIM – Lidl Stiftung (VITAL&FIT) [2012] not published in the ECR, paragraph 66, and the case-law cited).
59 Accordingly, since it has been established that the services referred to in paragraph 53 above are not complementary in the light of the criteria defined for that purpose by the Courts of the European Union, the applicant’s argument relying on the case-law of the Bundespatentgericht must be rejected.
The similarity of the signs
60 According to the case-law, two marks are similar when, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects (Case T-6/01 Matratzen Concord v OHIM – Hukla Germany (MATRATZEN) [2002] ECR II-4335, paragraph 30). 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 marks, 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 the 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 [2007] ECR I-4529, paragraph 35, and the case-law cited).
61 In paragraphs 25 to 27 of the contested decision, the Board of Appeal held that there was a low degree of visual similarity between the signs at issue, and that they were phonetically and conceptually similar, although that conceptual similarity was of little relevance.
– The visual similarity
62 The applicant claims that the earlier mark Event is included in the first word element, the word ‘eventer’, of the mark applied for, which is the most important element of that mark and is distinguished only by the ending ‘er’, common in German. Consequently, the marks at issue have at least an average level of visual similarity.
63 In that regard, it should be noted that the 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. 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. That could be the case, in particular, where that component is capable alone of dominating the image of that mark which members of the relevant public keep in their minds, such that all the other components are negligible in the overall impression created by that mark (see Case T-7/04 Shaker v OHIM – Limiñana y Botella (Limoncello della Costiera Amalfitana shaker) [2008] ECR II-3085, paragraph 40 and the case-law cited).
64 In the present case, as regards the mark applied for, it should be noted that the verbal elements apart from the word ‘eventer’, namely the phrase ‘event management systems’, and its figurative elements are not negligible. First, those word elements are the same length as the word ‘eventer’, and, although their typeface is smaller than that of the latter word, they are clearly visible and cannot escape the attention of the relevant public (see, by analogy, Case T-106/09 adp Gauselmann v OHIM – Maclean (Archer Maclean’s Mercury) [2010], not published in the ECR, paragraph 29).
65 Furthermore, it is true that the earlier mark Event is the same as the beginning of the element ‘eventer’ of the mark applied for and that the first component of word marks may be more likely to catch the consumer’s attention than the following components. However, that consideration cannot apply in all cases. It cannot, in any event, call into question the principle that the examination of the similarity between the marks must take account of the overall impression given by them, since the average consumer normally perceives a mark as a whole and does not examine its individual details (Case T-172/05 Armacell v OHIM – nmc (ARMAFOAM) [2006] ECR II-4061, paragraph 65, and the case-law cited). Secondly, in the mark applied for, the vertical lines are so broad as not to go unnoticed, in particular since they frame the word elements of that mark.
66 Therefore, although the ending ‘er’ is common in German, as the applicant claims, the relevant public will not fail to notice that that ending presents a difference between the earlier mark and the first element of the mark applied for. That public will also not fail to notice that the latter mark includes three more word elements and figurative elements which distinguish it from the earlier mark.
67 In light of the above, it can be concluded that the Board of Appeal was correct to hold, in paragraph 25 of the contested decision, that there is only a low degree of visual similarity between the signs at issue.
– The phonetic similarity
68 The applicant claims that, since the ending ‘er’ is not stressed in German and the pronunciation, in any event unlikely, by the relevant public of the words ‘event management systems’ does not affect the identical nature of the beginning of the signs at issue, there is a high degree of similarity.
69 In paragraph 26 of the contested decision, the Board of Appeal held that the words ‘event management systems’ would probably not be pronounced by the relevant public and that the contested marks were phonetically similar, on the ground that the syllables ‘e’ and ‘vent’ of the earlier mark are similar to the syllables ‘e’, ‘ven’ and ‘ter’ making up the first word element of the trade mark applied for.
70 That finding must be approved.
71 In effect, although those syllables are similar, they are nevertheless not identical, since the ending ‘er’ in the word ‘eventer’ gives it a syllabic structure which is not the same as that of the word ‘event’. This creates noticeable differences in the pronunciation of those two words.
72 Furthermore, since the other word elements of the mark applied for, although less important than the first, are not negligible, they preclude the conclusion that the degree of phonetic similarity between the contested marks is high.
73 Moreover, the lack of a high degree of phonetic similarity is still further substantiated if it is considered likely that the relevant public, which is German-speaking, has at least a basic knowledge of English, including the word ‘event’, which could thus be pronounced ‘ivent’ in accordance with the rules of the latter language, whereas the word ‘eventer’, which is not part of everyday English and is therefore unknown to the German-speaking public which speaks English, would probably be pronounced in accordance with the German rules of pronunciation.
74 It follows that the Board of Appeal was correct to hold, in paragraph 26 of the contested decision, that the signs at issue were phonetically similar.
– The conceptual similarity
75 According to the applicant, the fact that the word ‘eventer’ has no meaning in German has no impact on the conceptual similarity because the mark applied for refers to the same concept as that expressed by the earlier mark.
76 OHIM points out that, since the word ‘eventer’ has no meaning, there is no conceptual similarity between the signs at issue.
77 In that regard, it is necessary to uphold the Board of Appeal’s finding, in paragraph 27 of the contested decision, that the relevant public understands the meaning of the English word ‘event’, which is part of the basic vocabulary of that language.
78 Secondly, while it is true that the first word element of the mark applied for, the word ‘eventer’, has no meaning for the German-speaking public which knows English, it is nevertheless the case that the relevant public could associate it with the idea of event, especially because that word is followed by the phrase ‘event management systems’. However, since the latter element of the mark applied for, first, is not negligible and, second, is understood by the relevant public as referring to the idea of an event management system, the overall impression that the mark applied for makes on the relevant public and that made by the earlier mark Event are conceptually similar, in accordance with the Board of Appeal’s assessment, which must therefore be upheld.
79 With regard to the clarification made by the Board of Appeal that the conceptual similarity is of little relevance in the present case, on the ground that the services covered by the contested marks very often refer to events, so that their association with those marks is not at all surprising, it must be held that it has no impact on the conceptual comparison, but is part of the global assessment of the likelihood of confusion.
80 It follows from the foregoing that, subject to the latter observation, the Board of Appeal was correct to hold that the signs at issue were conceptually similar.
The global assessment of the likelihood of confusion
81 The global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services covered by them. Accordingly, a lesser degree of similarity between the goods or services covered 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) ECR II-5409, paragraph 74).
– The services covered by the mark applied for, apart from ‘business management; business administration’
82 The applicant contests the Board of Appeal’s finding, in paragraph 28 of the contested decision, that there is no likelihood of confusion for the services covered by the mark applied for, apart from those of ‘business management; business administration’, since they are different from those covered by the earlier mark.
83 However, since it has already been established, in paragraphs 45 to 58 above, that the Board of Appeal was correct to hold that the services covered by the mark applied for, apart from ‘business management; business administration’, were different from those covered by the earlier mark, the finding by the Board of Appeal that there is no likelihood of confusion with respect to those services must be upheld.
84 According to established case-law, 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 easyHotel, paragraph 43 and the case-law cited).
– The services covered by the mark applied for, of ‘business management; business administration’
85 The applicant points out that, in the light of its arguments concerning the similarity of the services and signs at issue, there is a likelihood of confusion, even assuming that the relevant public has a high degree of attentiveness and that the earlier mark is not very distinctive. It states however that that circumstance should be disregarded, since the word ‘event’ does not include exact references to either the services covered by that mark or to their essential characteristics.
86 It should, first of all, be borne in mind that, according to the case-law, in determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, an overall assessment must be made of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see ARTHUR ET FELICIE, paragraph 55, and the case-law cited).
87 In making that assessment, account should be taken, in particular, of the inherent characteristics of the trade mark, including whether or not it contains an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant sections of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see ARTHUR ET FELICIE, paragraph 56, and the case-law cited).
88 In the present case, the Board of Appeal, in paragraph 30 of the contested decision, held that the earlier mark had a weak distinctive character, implicitly, but necessarily, on the ground that the word ‘event’ describes the services covered by that mark.
89 However, since the only services covered by the earlier mark with respect to which there could be a likelihood of confusion are those of ‘development of hotels’, which are similar to the services of ‘business management; business administration’, covered by the mark applied for, the Board of Appeal mistakenly held that the earlier mark had a weak distinctive character. In effect, the word ‘event’ does not refer to ideas commonly associated with those services.
90 Therefore, it is necessary to determine whether the finding by the Board of Appeal that there is no likelihood of confusion can be upheld while holding that the earlier mark has a normal distinctive character with respect to the services concerned.
91 In that regard, it must be held, as the Board of Appeal found, that the word element ‘eventer’ of the mark applied for does not exactly reproduce the earlier mark. While the latter is, on the contrary, included in the phrase ‘event management systems’, the second verbal component of the mark applied for, the relevant public would not isolate the word ‘event’ from the two others which follow it in that phrase, but would retain the overall meaning thereof.
92 Since the relevant public for similar services is made up of professionals, who have a high degree of attentiveness, it is necessary to uphold the Board of Appeal’s finding that the similarities between the signs are insufficient for it to be held that there is a likelihood of confusion with respect to the services which must be held to be similar.
93 On the basis of the above considerations, the applicant’s single plea must be rejected and, therefore, the action must be dismissed in its entirety.
Costs
94 Under Article 87(2) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by OHIM.
On those grounds,
THE GENERAL COURT (Sixth Chamber)
hereby:
1. Dismisses the action.
2. Orders Event Holding GmbH & Co. KG to pay the costs.
Kanninen | Soldevila Fragoso | Kancheva |
Delivered in open court in Luxembourg on 21 March 2013.
[Signatures]