JUDGMENT OF THE GENERAL COURT (Second Chamber)
24 January 2012 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark VISUAL MAP – Earlier national word mark VISUAL – Relative ground for refusal – Likelihood of confusion – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))
In Case T-260/08,
Indo Internacional, SA, established in Sant Cugat del Vallès (Spain), represented initially by X. Fàbrega Sabaté and M. Curell Aguilà, and subsequently by M. Curell Aguilà and J. Güell Serra, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented initially by R. Manea and subsequently by A. Pohlmann, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM being
Visual SA, established in Saint-Apollinaire (France),
ACTION brought against the decision of the First Board of Appeal of OHIM of 15 April 2008 (Case R 700/2007-1), concerning opposition proceedings between Visual SA and Indo Internacional, SA,
THE GENERAL COURT (Second Chamber),
composed of N.J. Forwood, President, J. Schwarcz and A. Popescu (Rapporteur), Judges,
Registrar: S. Spyropoulos,
having regard to the application lodged at the Registry of the Court on 3 July 2008,
having regard to the response lodged at the Registry of the Court on 21 October 2008,
having regard to the decision of 12 December 2008 refusing leave to lodge a reply,
further to the hearing on 11 October 2011,
gives the following
Judgment
Background to the dispute
1 On 21 July 2004, the applicant, Indo Internacional, SA, filed an application for registration of a Community trade mark at 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 sign VISUAL MAP.
3 The services in respect of which registration was sought are in Class 44 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended (‘the Nice Agreement’) and correspond to the following description: ‘Optical services, in particular design and adaptation of customised progressive lenses’.
4 The application for a Community trade mark was published in Community Trade Marks Bulletin No 14/2005 of 4 April 2005.
5 On 4 July 2005, Visual SA filed a notice of opposition to registration of the mark applied for, pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009), in respect of the services referred to in paragraph 3 above.
6 The opposition was based on the earlier French word mark VISUAL, registered under No 43 303 854, in respect of services in Class 44 and corresponding to the following description:
‘Optician’s services: contactology, optometry. Detection of anomalies in eyepieces. Consulting in physiognomy, namely testing and adjustments of contact lenses, glasses and spectacle frames, artificial limbs and artificial implants (artificial eyes), cords and eyeglass chains, sun protection glasses, colour contact lenses (pen sponge, wash cloths, fabric cleaning, products for rinsing and decontaminating contact lenses). Services of oculists and medical care in the field of ophthalmology, medical health care and beauty. Consulting and information in the field of health, consulting and information in the field of optics; eye care services; services of fitting spectacles and sight testing; health care services and services of nursing home health; services of medical nursing homes and medical laboratories; services of consulting in pharmacy’.
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 20 March 2007, the Opposition Division upheld the opposition and accordingly refused the application for registration of the Community trade mark submitted by the applicant.
9 On 8 May 2007, the applicant filed a notice of appeal at OHIM, pursuant to Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the Opposition Division’s decision.
10 By decision of 15 April 2008 (‘the contested decision’), the First Board of Appeal of OHIM dismissed the appeal and upheld the decision of the Opposition Division, in particular in respect of the application of Article 8(1)(b) of Regulation No 40/94.
11 First, with regard to the relevant public, the Board of Appeal found that this was composed of the average consumer and professionals in France.
12 Secondly, in respect of the services concerned in Class 44, it found that these were identical to those covered by the earlier mark.
13 Thirdly, with regard to the signs in conflict, the Board of Appeal considered them to be visually, phonetically and conceptually similar.
14 Finally, the Board of Appeal concluded that the identity of the services and the similarity of the signs created a likelihood of confusion on the part of the public in France. In that regard, it took the view that the applicant had not advanced any evidence to show that the coexistence of the signs in conflict was based on the absence of a likelihood of confusion on the part of the average French consumer.
Forms of order sought
15 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
16 OHIM contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
Law
17 In support of its action, the applicant raises a single plea in law, alleging infringement of Article 8(1)(b) of Regulation No 40/94.
18 Article 8(1)(b) of Regulation No 207/2009 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
19 According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or from economically‑linked undertakings constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and 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 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).
20 In the present case, it must be noted, as a preliminary point, that neither the applicant nor OHIM challenges the Board of Appeal’s finding in paragraph 14 of the contested decision that the services in issue are identical.
21 By contrast, the applicant disputes the findings of the Board of Appeal concerning the relevant public, the comparison of the signs in conflict and the existence of a likelihood of confusion in the present case.
The relevant public
22 According to settled 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 Case T-256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 42 and the case-law cited).
23 The relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods or services covered by the earlier mark and those covered by the mark applied for (see judgment of 1 July 2008 in Case T‑328/05 Apple Computer v OHIM – TKS–Teknosoft (QUARTZ), not published in the ECR, paragraph 23).
24 Thus, as a general rule, when goods or services covered by one of the marks in issue are included in the larger designation covered by the other mark, the relevant public is defined by reference to the more specific wording (see judgment of 30 September 2010 in Case T-270/09 PVS v OHIM – MeDiTA Medizinische Kurierdienst (medidata), not published in the ECR, paragraph 28).
25 In the present case, it is first necessary to approve the finding of the Board of Appeal that, as the mark upon which the opposition is based is a French mark, the territory in respect of which the likelihood of confusion must be assessed is that of France.
26 Furthermore, the Board of Appeal stated, at paragraph 15 of the contested decision, as follows:
‘The relevant public may, in relation to the services in Class 44, be both the average consumer and professionals. In particular, the trade marks deal with opticians’ services and with the optical field such as the customisation of progressive lenses which, indeed, are rendered by the professional as claimed by the applicant but also can be offered to both the average and professional consumer.’
27 In this context the applicant, without expressly disputing that finding of the Board of Appeal, argues that the trade marks being compared in the present case cover optical services, which are usually expensive and are provided by specialist opticians and laboratories. According to the applicant, no products of general consumption bearing the signs VISUAL and VISUAL MAP exist on the market, but only expensive services provided by professionals.
28 It must, however, be noted that, while it is true that the services covered by the marks in conflict appear principally to involve professionals, the fact none the less remains that those services are provided by specialist opticians to final consumers. In that regard, it must be recalled that the consumers and the final users of the goods or services are not necessarily those who concluded the contract of sale with the producer. Indeed, it is not uncommon that the supplier of goods or services is not in direct contact with the final consumer (see, to that effect, judgment of 12 September 2007 in Case T-141/06 Glaverbel v OHIM (texture of a glass surface), not published in the ECR, paragraph 24). Further, it must be noted, as OHIM has, that the use of the term ‘in particular’ in the application for registration indicates that the services referred to are merely examples of services in that category and that the protection is not restricted to the services specified.
29 It follows that the Board of Appeal acted correctly in stating that the relevant public is composed of the average consumer and professionals.
Comparison of the signs
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 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. In that 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).
31 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 at issue as a whole, which does not mean that the overall impression conveyed to the relevant public by a compound trade mark may not, in certain circumstances, be dominated by one or more of its components (see OHIM v Shaker, paragraph 41 and the case-law cited). It is only if all the other components of the mark are negligible that the assessment of the similarity can be carried out solely on the basis of the dominant element (OHIM v Shaker, paragraph 42, and judgment of 20 September 2007 in Case C-193/06 P Nestlé v OHIM, not published in the ECR, paragraph 42). That may be the case, in particular, where that component is liable by itself to dominate the image of that mark in the memory of the relevant public, with the result that all other components of the mark are negligible in the overall impression which the mark creates (Nestlé v OHIM, paragraph 43).
32 It must be added that the fact that a mark consists exclusively of the earlier mark, to which another word has been added, is an indication that the two trade marks are similar (judgment of 12 November 2008 in Case T-281/07 ecoblue v OHIM – Banco Bilbao Vizcaya Argentaria (Ecoblue), not published in the ECR, paragraph 28, and judgment of 28 October 2009 in Case T-273/08 X-Technology R & D Swiss v OHIM – Ipko-Amcor (First‑On‑Skin), not published in the ECR, paragraph 31).
33 In the present case, it must be noted as a preliminary point that, contrary to what is claimed by the applicant, the Board of Appeal did not in any way classify the term ‘visual’ as the dominant element of the marks in conflict. On the contrary, the Board of Appeal merely compared those marks – each mark considered as a whole – and began its comparison with that term.
34 In respect of the visual comparison, each of the conflicting marks contains the element ‘visual’, which, in the present case, renders them visually similar. If account is also taken of the case-law cited at paragraph 32, the presence of the element ‘map’ in the mark applied for, despite its effect on the length of the mark, is not sufficient to exclude all visual similarity between the marks in conflict.
35 It must therefore be held that the Board of Appeal acted correctly in finding, at paragraph 17 of the contested decision, that the marks in conflict are visually similar.
36 The Board of Appeal also acted correctly in finding, at paragraph 18 of the contested decision, that the marks in conflict are phonetically similar with regard to their ‘visual’ elements. Having regard to the case-law cited at paragraph 32 above, the presence of the element ‘map’ in the mark applied for cannot change the overall impression of that mark in order to exclude all similarity between the two marks. The marks in conflict are therefore phonetically similar.
37 With regard to conceptual similarity, the Board of Appeal stated, at paragraph 19 of the contested decision, that the fact that the two marks in issue have the term ‘visual’ in common – which could be perceived by the average French consumer as being a variant of the French word ‘visuel’ – might lead to a close conceptual similarity between the signs. According to the Board of Appeal, the presence of the additional element ‘map’, which is meaningless for the average French consumer, is not such as to reduce such a similarity.
38 That finding of the Board of Appeal must be upheld. The fact that the French public may recognise in the word ‘visual’ the English equivalent to the French word ‘visuel’ is decisive. By contrast, the strictly English term ‘map’ will not be understood as being the English equivalent of the French words ‘reproduction, plan’.
39 Consequently, there is no conceptual difference between the signs, contrary to what is claimed by the applicant. There is, moreover, a close conceptual similarity between the signs if, as the applicant does, the view is taken that the French consumer concerned will attribute a clear and immediate meaning to the English term ‘visual’. The same meaning will therefore be given to that term in the two signs. As the other word element of the sign applied for – ‘map’ – has no meaning in French, it does not in any way alter the meaning of the word ‘visual’.
Global assessment of the likelihood of confusion
40 A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account, and in particular between the similarity of the trade marks and the similarity of the goods or services concerned. Accordingly, a lower degree of similarity between the goods or services may be offset by a higher degree of similarity between the marks, and vice versa (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and Joined Cases T‑81/03, T‑82/03 and T‑103/03 Mast-Jägermeister v OHIM – Licorera Zacapaneca (VENADO with frame and Others) [2006] ECR II‑5409, paragraph 74).
41 In the present case, it must be noted that it is common ground that the services in issue are identical. Given the identity of the services and the overall similarity of the signs in issue, it must be held that it is very likely that, when the relevant public considers those services designated by the mark applied for, or when reference is made orally to those services by means of that mark, it may attribute the same commercial origin to the services in issue. Accordingly, even if the relevant public is capable of perceiving certain visual and phonetic differences between the signs in issue, those differences are not such as to remove the risk that a link will be established between the marks concerned.
42 The Board of Appeal therefore acted correctly in law in holding, at paragraph 20 of the contested decision, that there was a likelihood of confusion between the marks at issue.
43 That conclusion is not called into question by the applicant’s argument alleging that the earlier mark VISUAL has a very weak distinctive character.
44 In that regard, although the distinctive character of the earlier mark must be taken into account for the purpose of assessing the likelihood of confusion, it must be recalled that it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (see Case T-134/06 Xentral v OHIM – Pages jaunes (PAGESJAUNES.COM) [2007] ECR II-5213, paragraph 70 and the case-law cited).
45 The contrary argument would make it possible to register a mark, one of the elements of which was identical with or similar to those of an earlier mark with a weak distinctive character, even where the other elements of that mark were still less distinctive than the common element and notwithstanding a likelihood that consumers would believe that the slight difference between the signs designating those marks reflected a variation in the nature of the goods or stemmed from marketing considerations, and not that it denoted goods from different traders (order of 27 April 2006 in Case C‑235/05 P L’Oréal v OHIM, not published in the ECR, paragraph 45).
46 Even if it were to be assumed that the term ‘visual’ could be regarded as being descriptive of the services concerned and that, consequently, the earlier mark could itself be regarded as having a weak distinctive character, the identical nature of the services covered by the marks at issue in this case, referred to at paragraph 14 of the contested decision, and the degree of similarity between those marks, considered cumulatively, prove to be sufficiently high to justify the conclusion that there is a likelihood of confusion.
47 So far as concerns the applicant’s argument that the Board of Appeal departed from a principle applied in other OHIM decisions, it must be pointed out that it follows from the judgment of the Court of Justice in Case C‑51/10 P Agencja Wydawnicza Technopol v OHIM [2011] ECR I‑0000, the scope of which had been discussed during the hearing, that OHIM is under a duty to exercise its powers in accordance with the general principles of European Union law. While, having regard to the principles of equal treatment and sound administration, OHIM is required to take into account the decisions already taken in respect of similar applications and to consider with particular care whether it should decide in the same way or not, the application of those principles must, however, be reconciled with respect for the principle of legality (see, to that effect, Agencja Wydawnicza Technopol v OHIM, paragraphs 73 to 75).
48 Moreover, for reasons of legal certainty and, indeed, of sound administration, the examination of any trade mark application must be stringent and full, in order to prevent trade marks from being improperly registered. That examination must be undertaken in each individual case (see, to that effect, Agencja Wydawnicza Technopol v OHIM, paragraph 77).
49 In the present case, contrary to what may have been the position in certain earlier decisions of OHIM, the Board of Appeal took the view that the mark applied for came up – having regard to the signs in issue, the services in respect of which registration was sought and the perception of the relevant group of persons – against the ground of refusal based on Article 8(1)(b) of Regulation No 40/94. In those circumstances, as the Board of Appeal acted correctly in finding that there was a likelihood of confusion between the signs in conflict, the applicant cannot effectively rely, for the purposes of invalidating that conclusion, on earlier decisions of OHIM which are allegedly contrary to the contested decision.
50 Finally, in respect of the decision of the Opposition Division of OHIM of 18 November 2008 in Case B 1159856, lodged by the applicant at the Court Registry on 9 January 2009, this also does not allow the finding of a likelihood of confusion between the marks in issue to be called into question.
51 In that regard, and without its being necessary to rule on the admissibility of that decision, it must first be noted that there is no contradiction between that decision and the decision which is contested in the present case. Indeed, the contested decision, contrary to what is claimed by the applicant, in no way states that the term ‘visual’ has distinctive, or non-descriptive, character, or that that term would not be understood by the relevant public.
52 Secondly, it must be held that, while it is true that the parties to the proceedings, Visual and Indo Internacional, and the earlier mark on which the opposition is based, VISUAL, are the same in both cases, the fact none the less remains that the mark and the services in respect of which registration is sought are at least different in part from those in issue in the case which gave rise to the Opposition Division’s decision of 18 November 2008. In the present case, the mark applied for is the word mark VISUAL MAP and the services for which the registration had been sought are in Class 44, whereas, in the case which gave rise to the Opposition Division’s decision of 18 November 2008, the mark applied for was the figurative mark VISUAL MAP DEVELOPER and the goods in respect of which registration had been sought were in Classes 9 and 10.
53 Thirdly, it must be noted that, contrary to what is claimed by the applicant, the Opposition Division’s decision of 18 November 2008 demonstrates that no monopoly on the use of the term ‘visual’ was granted to Visual by the contested decision. Indeed, the applicant was able to register the figurative mark VISUAL MAP DEVELOPER because that sign featured, in the view of the Opposition Division, sufficient differences vis-à-vis the sign VISUAL to exclude any likelihood of confusion.
54 In the light of all the foregoing, the single plea, and therefore the present application, must be dismissed as being unfounded.
Costs
55 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. 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 (Second Chamber)
hereby:
1. Dismisses the action;
2. Orders Indo Internacional, SA to pay the costs.
Delivered in open court in Luxembourg on 24 January 2012.
[Signatures]