JUDGMENT OF THE COURT OF FIRST INSTANCE (Seventh Chamber)
16 September 2009 (*)
(Community trade mark – Opposition proceedings – Application for figurative Community mark zerorh+ – Earlier national figurative and word marks zero – Likelihood of confusion – Similarity of the signs – Similarity between products – Article 8(1)(b) of Regulation (EC) No 40/94 (now Article 8(1)(b) of Regulation (EC) No 207/2009))
In Case T‑400/06,
Zero Industry Srl, established in Mariano Comense (Italy), represented by M. Rapisardi and N. Colombo, lawyers,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by D. Botis, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the Court of First Instance, being
zero Germany GmbH & Co. KG, formerly zero International Holding GmbH & Co. KG, established in Bremen (Germany), represented by W.‑D. Kuntze, lawyer,
ACTION for annulment of the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 5 October 2006 (Case R 958/2005-1) concerning opposition proceedings between zero Germany GmbH & Co. KG and Zero Industry Srl,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Seventh Chamber),
composed of N.J. Forwood, President, D. Šváby (Rapporteur) and E. Moavero Milanesi, Judges,
Registrar: N. Rosner, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 22 December 2006,
having regard to the response of OHIM lodged at the Registry on 27 April 2007,
having regard to the response of the intervener lodged at the Registry of the Court on 26 April 2007,
further to the hearing on 10 December 2008,
gives the following
Judgment
Background to the dispute
1 On 18 December 2000, the applicant, Zero Industry Srl, filed an application for a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), in accordance with Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (now 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 trade mark applied for is the following figurative sign:
3 The goods for which registration was sought, following the restriction made during the procedure before OHIM, are in Classes 9, 18 and 25 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 class, to the following descriptions:
– ‘Protective goggles and spectacles; spectacle frames, in particular sunglasses, skiing, mountaineering and sports goggles in general; corrective and protective lenses for spectacles; spectacle cases’, in Class 9;
– ‘Trunks, travelling bags and bags, in particular for sports; umbrellas’, in Class 18;
– ‘Advanced technology sports clothing’, in Class 25.
4 The application for a Community trade mark was published in Community Trade Marks Bulletin No 62/2001 of 16 July 2001.
5 On 16 October 2001, the intervener, zero Germany GmbH & Co. KG (formerly zero International 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 the registration of the mark applied for in respect of the goods listed in paragraph 3 above.
6 The opposition was based on the following earlier marks:
– the German figurative mark No 39 540 115, registered on 18 March 1996 in respect of ‘bags’, in Class 18, and, ‘outer garments, including woven and knitted clothing, footwear, headgear, belts (except for belts made from unprecious and precious metals and their substitutes), gloves, scarves, neckerchiefs’, in Class 25, depicted below:
– the national word mark ZERO, registered in Germany on 13 April 1999 under number 39904047, in respect of ‘spectacles, including sunglasses’ in Class 9.
7 The grounds raised in support of the opposition were those set out in Article 8(1)(b) of Regulation No 40/94 (now Article 8(1)(b) of Regulation No 207/2009).
8 On 28 June 2005, the Opposition Division upheld the opposition, and thus rejected the application for registration for all the goods at issue except for ‘umbrellas’ in Class 18.
9 On 4 August 2005, the applicant filed an appeal against the decision of the Opposition Division, in accordance with Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009).
10 By decision of 5 October 2006 (the ‘contested decision’), the First Board of Appeal rejected the applicant’s appeal on the ground that there was a likelihood of confusion between the signs at issue. It found, in essence, that there was a high degree of similarity between the marks at issue and that the goods concerned were similar. In addition, in the view of the Board of Appeal, having regard to the conditions in which those goods were marketed, it was conceivable that consumers might associate the signs zerorh+ and zero and regard the marks at issue as designating different ranges of goods coming from the same manufacturer.
Forms of order sought by the parties
11 The applicant claims that the Court should:
– annul the contested decision;
– definitively reject the opposition;
– order OHIM to register the trade mark applied for;
– order OHIM and the intervener to pay the costs of the opposition proceedings and of the proceedings before the Court.
12 OHIM contends that the Court should:
– declare the second, third and, in part, the fourth, heads of claim to be inadmissible;
– dismiss the action as to the remainder;
– order the applicant to pay the costs.
13 The intervener contends that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
14 At the hearing the applicant also claimed that the documents annexed to the intervener’s reply were inadmissible since they were not translated into the language of the case.
Law
15 In support of its action the applicant relies on a single plea based on an infringement of Article 8(1)(b) of Regulation No 40/94.
Arguments of the parties
16 The applicant is of the opinion, contrary to that of the Board of Appeal, that there is no likelihood of confusion between the signs at issue. It disputes the findings of the Board of Appeal relating to the comparison both of the signs and of the goods at issue and, ultimately, its finding concerning the likelihood of confusion between the mark applied for and the earlier marks.
17 First, the applicant essentially submits that, as the ‘advanced technology sports clothing’ is exclusively designed for people practising extreme sports and is sold only in sports shops, that clothing is clearly different from the goods designated by the earlier marks. The same considerations apply also to the other goods at issue.
18 Second, the applicant claims that the signs at issue are visually, phonetically and conceptually different. The mark applied for is very particularly constituted by its style, is made up of different colours and does not consist only of letters but also a symbol. In its view, the symbol ‘rh+’ is dominant in the sign ‘zerorh+’. Furthermore, it points out, first, that there are several Community trade marks and international registrations including the word ‘zero’ in different forms and combinations, which is a common word in several countries of the European Union including in Germany and, second, that the mark applied for has a heightened reputation in so far as the sign zerorh+ is particularly well known for goods in Class 9. In its view, in the sign zerorh+, the symbol ‘rh+’ thus enables consumers to recognise the origin of the goods at issue and to distinguish even better the mark applied for from the earlier marks.
19 Third, the applicant submits that, in view of the differences between the signs at issue and of the different nature, method of use and end users of the goods in question, there is no likelihood of confusion between the mark applied for and the earlier marks on the part of consumers.
20 OHIM and the intervener dispute the applicant’s arguments.
Findings of the Court
21 Under Article 8(1)(b) of Regulation No 40/94, 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.
22 The existence of a likelihood of confusion on the part of the public must be the subject of an overall assessment, taking into account all the factors relevant to the particular case (see the judgment of 15 March 2007 in Case C‑171/06 P T.I.M.E. ART v OHIM, not published in the ECR, paragraph 33 and the case‑law cited).
23 That global appreciation of the likelihood of confusion, in relation to the visual, aural or conceptual similarity of the marks at issue, must be based on the overall impression given by the marks, bearing in mind in particular their distinctive and dominant components (see T.I.M.E. ART v OHIM, cited in paragraph 22 above, paragraph 34 and the case‑law cited).
24 It also implies some interdependence between the relevant factors and, in particular, a similarity between the trade marks and between the goods or services covered. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa. Accordingly, it is necessary to give an interpretation of the concept of similarity in relation to the likelihood of confusion, the appreciation of which depends, in particular, on the recognition of the trade mark on the market and the degree of similarity between the mark and the sign and between the goods or services identified (see T.I.M.E. ART v OHIM, cited in paragraph 22 above, paragraph 35 and the case‑law cited).
25 In the present case, the earlier marks on which the opposition is based are registered in Germany, which is therefore the relevant territory for the purposes of the application of Article 8(1)(b) of Regulation No 40/94. In addition, as found by the Board of Appeal in the contested decision, given the nature of the goods, the relevant public is composed of average consumers and there are no grounds to divide average consumers into those who practise sports and those who do not (contested decision, paragraph 19). That definition of the relevant public is also not disputed by the applicant.
26 The applicant claims that the level of attention of the relevant public is very high given that the goods concerned fall within the fashion sector and are thus luxury goods.
27 In that context, according to settled case‑law, for the purpose of an overall assessment of the likelihood of confusion, it must be borne in mind inter alia that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (see Case C‑361/04 P Ruiz-Picasso and Others v OHIM [2006] ECR I-643, paragraph 38 and the case‑law cited).
28 In the present case, it should none the less be pointed out that, in the light of the broad description of the goods concerned (see paragraphs 3 and 6 above), the level of attention of the average consumer cannot be defined as being high. The average consumer must therefore be deemed to be reasonably well informed and reasonably observant and circumspect.
29 Consequently, the Board of Appeal’s definition of the level of attention of the relevant public was not incorrect.
30 As regards the comparison of the goods at issue in Class 25, the Board of Appeal in essence found, first, that ‘advanced technology sports clothing’ in respect of which registration was sought formed part of a broader category of clothing and, second, that ‘outer garments’ were also included on the list of goods covered by the earlier German figurative mark. In its view, there was a high level of similarity between those categories of goods in so far as they overlap in part; ‘advanced technology sports clothing’ also includes ‘outer garments’ (such as winter sports clothing) and ‘outer garments’ may also include ‘outer sports clothing’. It also pointed out in that regard, first, that the nature of sports clothing and outer garments was the same, since all goods of that kind were intended to protect the human body against external conditions, and, second, that the end users were also the same, since any average consumer is likely to purchase various types of clothing: official, casual and sport (contested decision, paragraph 17).
31 As regards the comparison of the goods at issue in Classes 9 and 18, the Board of Appeal agreed with the Opposition Division’s findings that, first, the goods in Class 9 in respect of which registration was sought, essentially spectacles and their components, were identical with or very similar to the goods covered by the earlier German mark and, second, the goods in Class 18 in respect of which registration was sought, namely ‘trunks, travelling bags and bags, in particular for sports’, were identical with or very similar to the bags covered by the earlier German figurative mark (see paragraph 18 of the contested decision). The fact that the applicant’s spectacles and bags represent ‘sporty’ styles and are intended for people who practise sports did not, in the Board of Appeal’s view, exclude them from the more general categories of ‘spectacles, including sunglasses’, and ‘bags’ covered by the earlier marks. The Board of Appeal considered that, in the light of the list of goods as it appears on the register, and since the intervener’s specifications were broadly worded covering any type of ‘spectacles’ or ‘bags’, those products were therefore similar (contested decision, paragraph 18).
32 In that regard, it should be noted that it follows from the wording of Article 8(1)(b) of Regulation No 40/94 that a likelihood of confusion within the meaning of that provision presupposes that the goods or services covered are either identical or similar. Consequently, even where a sign is identical to another with a highly distinctive character, it is still necessary to adduce evidence of similarity between the goods or services covered by the opposing marks (see, by analogy, Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 22).
33 In addition, according to settled case‑law, in order to assess the similarity of the goods at issue, all the relevant features of the relationship between those goods or services should be taken into account, including, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (Case T‑85/02 Díaz v OHIM – Granjas Castelló(CASTILLO) [2003] ECR II‑4835, paragraph 32, and Case T‑346/04 Sadas v OHIM – LTJ Diffusion(ARTHUR AND FELICIE) [2005] ECR II‑4891, paragraph 33). Other factors may also be taken into account such as, for example, the distribution channels of the goods concerned (see, to that effect, Case T‑164/03 Ampafrance v OHIM – Johnson & Johnson (monBeBé) [2005] ECR II-1401, paragraph 53).
34 In the present case, contrary to what the applicant claims, the Board of Appeal correctly examined those different factors to be taken into account in assessing the similarity of the goods at issue.
35 In particular, as regards ‘advanced technology sports clothing’ in Class 25 covered by the mark applied for, the Board of Appeal was correct to hold that they bore a high level of similarity to ‘outer garments’ in that same class, as covered by the earlier German figurative mark.
36 ‘Advanced technology sports clothing’ and ‘outer garments’ are clothing goods whose purpose is the same since they are goods which are manufactured to cover, hide, protect and clothe the human body. As regards their nature, it is true that, as submitted by the applicant, ‘advanced technology sports clothing’ can be made up of special and innovative material. However, it should be noted that the category of goods ‘outer garments’ covered by the earlier German figurative mark may also cover ‘advanced technology’ sporting outer garments. In the absence of a restriction of any kind in its wording and of a precise meaning of the expression ‘advanced technology’ used in the trade mark application, there is nothing preventing the intervener from also marketing certain advanced technology sports clothing under the earlier German figurative mark as ‘outer garments’. That category could include goods such as ‘high-tech’ anoraks made of waterproof material, sweaters or ski jackets, or even nautical sports clothing made of state of the art fibres which keep heat locked in. Consequently, it must be found that there is an overlap between the categories of goods referred to above.
37 That finding cannot be called into question by the applicant’s claims that, first, ‘advanced technology sports clothing’ is aimed solely at those who practise extreme sports and is sold exclusively in sports stores and, second, that the goods covered by earlier marks are not only ‘urban’ style clothes but are also sold in ‘mono brand’ stores, which in its view means that the end users, the way in which the goods are used, the distribution channels and points of sale are distinct.
38 In so far as those claims concern the particular circumstances in which the goods covered by the marks at issue are marketed, which may vary in time and according to the wishes of the proprietors of those marks, it must be found that the prospective analysis of the likelihood of confusion between two marks, which pursues an aim in the general interest, that is, the aim that the relevant public may not be exposed to the risk of being misled as to the commercial origin of the goods in question, cannot be dependent on the commercial intentions, whether carried out or not, and naturally subjective, of the trade mark proprietors (see, to that effect, Case T‑147/03 Devinlec v OHIM – TIME ART (QUANTUM) [2006] ECR II‑11, paragraph 104). In addition, it is not apparent in any way from the term ‘advanced technology sports clothing’ that the goods covered by the trade mark application may be of interest only to those who practise extreme sports.
39 In addition, the question whether the goods actually manufactured by the intervener are ‘urban’ style casual clothes is irrelevant since the wording of the category ‘outer garments’ covered by the earlier German figurative mark makes it possible to protect other goods such as certain outer sports clothing as well. Furthermore, it is possible that the goods concerned in Class 25 may be sold at the same points of sale as complementary or even competing goods.
40 As regards the relationship, first, between ‘protective goggles and spectacles, sunglasses, skiing, mountaineering and sports goggles in general’ in Class 9, covered by the mark applied for, and ‘spectacles’ in the same class covered by the earlier German word mark and, second, between ‘trunks, travelling bags and bags, in particular for sports’ in Class 18 covered by the mark applied for, and ‘bags’ in the same class, covered by the earlier German figurative mark, it should be held, as did the Board of Appeal, that the categories of goods covered by the earlier marks are worded in a broad manner thus covering any type of ‘spectacles’ or ‘bags’.
41 It follows that the Board of Appeal was correct to find that the goods at issue were similar.
42 In addition, the Board of Appeal considered that there was a high degree of similarity between the signs at issue (contested decision, paragraph 24).
43 The Board of Appeal pointed out in that regard that the mark applied for was divided into two parts: the word ‘zero’ written in a red font and the symbol ‘rh+’ written in white against a black background. In its view, since the word ‘zero’ appears first and is noticeably longer, it is likely to be perceived as a dominant element.
44 According to settled case-law, 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 compound 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 where that component is likely to dominate, by itself, the image of that mark which the relevant public keeps in mind, with the result that all the other components of the mark are negligible within the overall impression created by it (see Case T‑7/04 Shaker v OHIM – Limiñana y Botella (Limoncello della Costiera Amalfitana shaker) [2008] ECR II-0000, paragraph 40 and the case-law cited).
45 In the assessment of the dominant character of one or more given components of a compound trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the compound mark (Case T-6/01 Matratzen Concord v OHIM – Hukla Germany(MATRATZEN) [2002] ECR II‑4335, paragraph 35).
46 In the present case, it should be found, first of all, that even supposing that the consumer, when buying the goods at issue, pays particular attention to the visual aspect of the marks and thus to their graphic design (see, to that effect, judgment of 12 July 2006 in Case T‑97/05 Rossi v OHIM – Marcorossi (MARCOROSSI), not published in the ECR, paragraph 45), the graphic design of the mark applied for draws the consumer’s attention less than the verbal element ‘zerorh+’ of that compound mark. It is that verbal element which will draw the attention of the public most naturally. The graphic design of the mark applied for is not particularly striking and that mark does not contain any figurative element capable of prevailing over the verbal element ‘zerorh+’ in the overall impression given by the mark. The difference in the graphic design of the signs at issue thus cannot call into question, in itself, the Board of Appeal’s finding that the signs at issue bore a high degree of similarity.
47 Next, having regard to the presence of the word ‘zero’ in the signs at issue and following the case‑law cited in paragraphs 44 and 45 above, it is necessary to examine whether, in the overall impression conveyed to the relevant public by the mark applied for, that word constitutes the dominant element of the mark applied for, as found by the Board of Appeal. The applicant submits that the word ‘zero’ has only a weak distinctive character as a trade mark for the goods concerned and that it is less important in a comparison of the marks at issue than the symbol ‘rh+’.
48 In that regard, first, it should be noted that the sign zerorh+ is divided into two elements, namely the word ‘zero’ and the symbol ‘rh+’ which have different graphic aspects and are in different colours. That division is made more apparent by the colours chosen, namely red and white, which stand in contrast to one another.
49 Second, it must be found that the fact that the symbol ‘rh+’ appears in bold letters has little impact on drawing the consumer’s attention, since the difference in graphics between that component and the word ‘zero’ is hardly noticeable in so far as the word ‘zero’ is also easy to read. Next, the specific composition of the symbol ‘rh+’, namely two lower case letters and the mathematical symbol ‘+’, is also not sufficient to arrive at the conclusion that the symbol ‘rh+’ is dominant in the mark applied for since the word ‘zero’ occupies a larger part of the mark and is situated at the beginning of it. In that regard, it should be noted that the consumer normally attaches more importance to the first part of words (Joined Cases T‑183/02 and T‑184/02 El Corte Inglés v OHIM – González Cabello and Iberia Líneas Aéreas de España (MUNDICOR) [2004] ECR II‑965, paragraph 81).
50 Third, it should be noted that, in the light of the fact that the relevant public is not specialised in the medical field, a significant proportion of that public would not perceive the symbol ‘rh+’ as referring to a blood group and, consequently, that symbol would lack the concrete element necessary to be remembered easily. It is thus likely that the relevant public would forget it with the passage of time.
51 Even supposing that a proportion of the relevant public were to understand the symbol ‘rh+’ as a reference to a blood group, the word ‘zero’ still has an independent distinctive role in the mark applied for since it is placed at the beginning of it and is easily readable. Therefore, even if that word could not be considered, in the mind of the relevant public, as dominating the overall impression created by the mark applied for, it must still be taken into account in the assessment of the similarity of the marks at issue and of the likelihood of confusion between the mark applied for and the earlier marks (see, to that effect, the judgment of 12 November 2008 in Case T‑281/07 ecoblue v OHIM – Banco Bilbao Vizcaya Argentaria (Ecoblue), not published in the ECR, paragraph 33).
52 It must therefore be found that the word ‘zero’ is both the only verbal element of the earlier marks and the beginning of the verbal component ‘zerorh+’ of the mark applied for, and as such would have at least an independent distinctive role as regards the relevant public.
53 In the light of the above, the applicant’s argument that the word ‘zero’ is less important in the comparison of the marks at issue must be rejected as unfounded.
54 As regards the comparison of the signs, it should be pointed out 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 (see Case T‑286/02 Oriental Kitchen v OHIM – Mou Dybfrost (KIAP MOU) [2003] ECR II‑4953, paragraph 38 and the case‑law cited).
55 Visually, it should be noted that the marks at issue are based on the same essential element, namely the word ‘zero’, and are, on that ground, similar. In the view of the Board of Appeal, that overall impression of similarity is strengthened, as regards the earlier German figurative mark, because the word ‘zero’ appears on a darker background, just as the verbal element ‘zerorh+’ of the mark applied for (contested decision, paragraph 20).
56 Phonetically, the Board of Appeal considers that the mark applied for will be pronounced in German as ‘zeroerhaplus’, ‘zeror’ (with or without a pause in the pronunciation between the two syllables) or simply as ‘zero’, since ‘rh+’, being a symbol easily separable from the rest, can be omitted. In its view, given that the word ‘zero’ is present in each of the marks at issue, it will, in any event, be clearly audible (contested decision, paragraph 21).
57 The applicant submits in essence that the verbal element ‘zerorh+ will always be pronounced in its entirety in German, namely as ‘zeroerhapositiv’, and will thus be pronounced differently from the word ‘zero’.
58 The Court considers the Board of Appeal’s assessment to be correct. The two signs share the first four letters (‘z’, ‘e’, ‘r’ and ‘o’). The addition of the symbol ‘rh+’ to the mark applied for is not decisive in the phonetic comparison since, first, it is situated at the end of the word and, second, a significant proportion of the public would probably omit that symbol when pronouncing the verbal element ‘zerorh+’ of the mark applied for, either because they are unsure as to what it means, or simply to economise on words since the time taken to pronounce that symbol is relatively long and it is easily separable from the rest when being pronounced.
59 It must therefore be held, as did the Board of Appeal, that the elements of the signs at issue which resemble one another phonetically outweigh the dissimilarities between those signs in such a way that, following an overall assessment, those signs are similar.
60 Conceptually, the Board of Appeal considers that the marks at issue share the concept of ‘zero’, which can be perceived as a cardinal number or as an allusion to a ‘beginning’ (to start from ‘zero’) or to ‘nothing’. In its view, since the mark applied for also contains the ‘rh+’ symbol, some consumers might therefore associate it with a ‘particular blood group’ (contested decision, paragraph 22).
61 The applicant submits that the mark applied for alludes to a ‘blood group’, whereas the earlier marks evoke the ‘cardinal number’, which means that the signs at issue also differ conceptually.
62 First, the Court finds that the sign zerorh+ bears no link with the goods concerned and will therefore not be easily perceived by consumers as designating those goods.
63 Second, even if the view were to be taken that certain targeted consumers might perceive the symbol ‘rh+’ of the mark applied for as a blood group and that, by that association, the mark applied for would differ conceptually from the earlier marks to some extent, the fact none the less remains that those marks would conserve a conceptual link between them, consisting of one common word, namely the word ‘zero’, evoking the cardinal number, which would limit that difference (see, by analogy, Case T‑256/04 Mundipharma v OHIM – Altana Pharma (RESPICUR) [2007] ECR II‑449, paragraph 58, and judgment of 25 June 2008 in Case T‑36/07 Zipcar v OHIM – Canary Islands Car (ZIPCAR), not published in the ECR, paragraph 46).
64 In that regard, it must also be noted in relation to the mark applied for that, while the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, he will nevertheless, perceiving a verbal element within a figurative sign, break it down into verbal elements which, for him, suggest a concrete meaning or which resemble words known to him (see, to that effect, judgment of 14 February 2008 in Case T‑189/05 Usinor v OHIM – Corus (UK) (GALVALLOY), not published in the ECR, paragraph 62 and the case‑law cited).
65 In the present case, the mark applied for is made up of a verbal element which is clearly divided into two elements, namely the word ‘zero’ in red and the symbol ‘rh+’ in white. It cannot therefore be considered that the verbal element ‘zerorh+’ creates, for the general public, a logical unit with a semantic value which is distinct from those of its two components, the word ‘zero’ and the symbol ‘rh+’.
66 In addition, contrary to what the applicant claims, that division of the verbal element ‘zerorh+’ into two distinct elements makes it unlikely that the mark applied for will be viewed conceptually as a ‘universal blood group compatible with all the other blood groups’. The average consumer would, at best, understand only vaguely the reference of the second element, namely the symbol ‘rh+’, to the blood type rhesus positive.
67 Consequently, the marks at issue do not contain any element making it possible to differentiate them conceptually in such a way so as to neutralise the visual and phonetic similarities which have been established.
68 Accordingly, the Board of Appeal was correct to find there to be a high degree of similarity between the conflicting marks, considering each of them as a whole and taking account, inter alia, of their distinctive and dominant elements.
69 In that regard, the applicant’s other claims concerning the weak distinctive character of the word ‘zero’ and the fact that the mark applied for is well known are irrelevant.
70 First, as regards the claim that the word ‘zero’ is a common word in many countries of the European Union including in Germany, it must be held that, even if it is accepted that the intrinsic distinctive character of the word ‘zero’ may be lower than, for example, that of an invented term, its meaning none the less bears no relationship to the goods at issue or their characteristics. It does not follow from the information submitted by the applicant that, in Germany, the word ‘zero’ might be clearly linked with the goods at issue.
71 In addition, the weak distinctive character of an element of a compound mark does not necessarily imply that that element cannot constitute a dominant element since – because, in particular, of its position in the sign or its size – it may make an impression on consumers and be remembered by them (judgment of 16 May 2007 in Case T‑491/04 Merant v OHIM – Focus Magazine Verlag (FOCUS), not published in the ECR, paragraph 49). It should be added that, as regards the earlier marks, in so far as they comprise a single verbal element, the argument that that word has become common is not relevant for the purposes of the comparison of the signs at issue (see, to that effect, Limoncello della Costiera Amalfitana shaker, cited in paragraph 44 above, paragraph 37).
72 Second, the applicant’s argument that many Community trade marks and international registrations contain the word ‘zero’ in different forms and combinations, which diminishes the distinctive character of that word, must be rejected as unfounded. It must be held that the applicant has not submitted any evidence that Community trade marks containing the work ‘zero’ had genuinely been used.
73 As regards the results of the research submitted by the applicant, according to which 93 Community trade marks are made up of or include the word ‘zero’, it should be pointed out that the Opposition Division found, in that regard, that ‘… there are no indications as to how many of such trade marks are effectively used in the market’. The applicant did not dispute that finding before the Board of Appeal but none the less reverted to the issue of that evidence in its application lodged at the Court. It must be found that the mere fact that a number of trade marks relating to the goods at issue contain the word ‘zero’ is not enough to establish that the distinctive character of that element has been weakened because of its frequent use in the field concerned (see, by analogy, Case T‑135/04 GfK v OHIM – BUS(Online Bus) [2005] ECR II‑4865, paragraph 68, and Case T‑29/04 Castellblanch v OHIM – Champagne Roederer (CRISTAL CASTELLBLANCH) [2005] ECR II‑5309, paragraph 71).
74 Third, as regards the applicant’s claim that the earlier marks have weak distinctive character, it should be held that accepting that the earlier mark has a weak distinctive character does not prevent the finding in the present case that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (see, by analogy, Canon, cited in paragraph 32 above, paragraph 24), 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 judgment of 12 November 2008 in Case T‑210/05 Nalocebar v OHIM – Limiñana y Botella (Limoncello di Capri), not published in the ECR, paragraph 51 and the case‑law cited).
75 In addition, granting excessive importance to the fact that the earlier mark has only a weak distinctive character would have the effect that the factor of the similarity of the marks would be disregarded in favour of the factor based on the distinctive character of the earlier mark, which would then be given undue importance. The result would be that where the earlier mark is only of weak distinctive character a likelihood of confusion would exist only where there was a complete reproduction of that mark by the mark applied for, whatever the degree of similarity between the signs at issue. Such a result would not, however, be consistent with the very nature of the global assessment which the competent authorities are required to undertake by virtue of Article 8(1)(b) of Regulation No 40/94 (see Limoncello di Capri, cited in paragraph 74 above, paragraph 52 and the case‑law cited).
76 Finally, as regards the applicant’s claim that the sign zerorh+ is well known in relation to the goods in Class 9, it should be pointed out that, even supposing that that were established, it is not capable, in itself, of reversing the conclusion that the word ‘zero’ in the mark applied for retains an independent distinctive role at the very least. Even supposing that the sign applied for were well known in the commercial sectors concerned, in particular in the sports goggles sector, it must be found that it is the sign zerorh+ with all its components that would be well known, and not just the ‘rh+’ symbol alone.
77 As regards the likelihood of confusion, first, it should be noted that, as required by the case‑law (see paragraphs 21 to 24 above), the Board of Appeal evaluated the various relevant factors taking account of their interdependence, and found that there was a likelihood of confusion because of the similarity between the goods concerned and the close similarity between the marks at issue (paragraph 24 of the contested decision).
78 Second, the Board of Appeal also pointed out in paragraph 25 of the contested decision that, as regards the conditions in which the goods in question are marketed, it is not unusual in the clothing business for the same mark to be configured in various ways according to the product it designates. It is also common, in its view, for the same clothing manufacturer to use sub‑brands in order to distinguish its various lines from those of others. It therefore concluded that it is conceivable that consumers may associate zerorh+ and zero and regard the marks at issue as designating different ranges of products coming from the same manufacturer.
79 The applicant submits that, in the light of the differences between the signs at issue and the differences in nature, method of use and the end users of the goods concerned, there is no likelihood of confusion for consumers between the mark applied for and the earlier marks.
80 Having regard, first, to the similarity of the goods concerned and the close similarity between the signs at issue and, second, to the interdependence of those two factors in the context of an overall assessment of the likelihood of confusion, the Board of Appeal was correct to find there to be such a likelihood between the conflicting marks.
81 As the Board of Appeal correctly pointed out, that is the case in particular in so far as, first, it is common in the clothing sector for the same mark to be configured in various ways according to the type of product which it designates, and second, it is also common for a single clothing manufacturer to use sub-brands (signs that derive from a principal mark and which share with it a common dominant element) in order to distinguish its various lines from one another (Case T‑104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II‑4359, paragraph 49, and Joined Cases T-117/03 to T-119/03 and T-171/03 New Look v OHIM – Naulover (NLSPORT, NLJEANS, NLACTIVE and NLCollection) [2004] ECR II‑3471, paragraph 51). In the present case, it has already been pointed out that the conflicting marks have the word ‘zero’ in common, which is the only verbal component of the earlier marks and which, at the very least, has an independent distinctive role in the mark applied for. Consequently, consumers could perceive the marks at issue as different configurations of the same mark or one of them as being a sub‑brand of the other.
82 In the light of all of the above, none of the applicant’s arguments can call into question that finding regarding the likelihood of confusion.
83 As regards, first, the applicant’s argument that account needs to be taken of the impact of the reputation of the mark applied for on the existence of a likelihood of confusion, it should be pointed out that the case‑law recognises the importance of a high level of distinctiveness in the assessment of the likelihood of confusion with the earlier mark (see, to that effect, Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 20).
84 In addition, it must be found, having regard to all of the evidence submitted by the applicant and in the light of the file, that the applicant has failed to show that the mark applied for was used for a specific purpose in Germany enabling it to be found that it is well known. Thus, extracts from a catalogue of the mark zerorh+ relating to sports goggles are not sufficient, on their own, to prove that the mark applied for is well known.
85 In determining whether a mark has acquired distinctive character following the use made of it, the competent authority must make an overall assessment of the evidence that the mark has come to identify the product concerned as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings (Case T‑262/04 BIC v OHIM (Shape of a lighter) [2005] ECR II‑5959, paragraph 63 and the case‑law cited).
86 In that regard, account must be taken of 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 interested parties who identify the product as originating from a particular undertaking because of the mark, statements from chambers of commerce and industry or other trade and professional associations as well as opinion polls, inter alia (see Shape of a lighter, cited in paragraph 85 above, paragraph 64 and the case‑law cited).
87 Finally, in relation to the applicant’s argument that its goods are sold exclusively in sports stores which also sell sporting equipment while the goods bearing the earlier mark are sold in ‘mono brand’ stores or on the shelves of large stores, it should be pointed out that, since these particular circumstances in which the goods in question were marketed may vary over time and depending on the wishes of the proprietors of the opposing marks, it is inappropriate to take those circumstances into account in the prospective analysis of the likelihood of confusion between those marks (T.I.M.E. ART v OHIM, cited in paragraph 22 above, paragraph 59).
88 It is apparent from all the above that, even if it were to be accepted that the public may be in a position to make a distinction between the marks at issue, there is a risk that they might make a link between the signs zerorh+ and zero given their similarities and that the public might believe, in the light of all the other relevant factors, that the goods concerned come from the same undertaking or from linked undertakings.
89 It follows that the single plea based on an infringement of Article 8(1)(b) of Regulation No 40/94 is not well founded and, consequently, that the action seeking annulment of the contested decision must be dismissed.
90 Given that the action is to be dismissed it is not necessary to adjudicate on the applicant’s other heads of claim seeking the definitive rejection of the opposition and an order requiring OHIM to register the mark applied for, or on the plea of inadmissibility raised by OHIM against those heads of claim.
91 There is also no need to adjudicate on the admissibility of the documents annexed to the intervener’s reply which were not translated into the language of the case (paragraph 14 above). Those documents are irrelevant for the resolution of the present case.
92 Consequently, the action must be dismissed.
Costs
93 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 forms of order sought by OHIM and the intervener.
On those grounds,
THE COURT OF FIRST INSTANCE (Seventh Chamber)
hereby:
1. Dismisses the action;
2. Orders Zero Industry Srl to pay the costs.
Delivered in open court in Luxembourg on 16 September 2009.
[Signatures]