JUDGMENT OF THE COURT OF FIRST INSTANCE (Eighth Chamber)
26 November 2008 (*)
(Community trade mark – Opposition proceedings – Application for Community word mark ATOZ – Earlier international word mark ARTOZ – No requirement to provide evidence of genuine use – Starting point for the five-year time-limit – Date of registration of the earlier mark – Article 43(2) and (3) of Regulation (EC) No 40/94 – Likelihood of confusion – Article 8(1)(b) of Regulation No 40/94 – Obligation to state the reasons on which a measure is based – Articles 73 and 79 of Regulation No 40/94 and Article 6 of the ECHR)
In Case T‑100/06,
Deepak Rajani, residing in Berlin (Germany), represented by A. Dustmann, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by G. Schneider and A. Folliard-Monguiral, acting as Agents,
defendant,
the other party to the proceedings before the OHIM Board of Appeal being
Artoz-Papier AG, established in Lenzburg (Switzerland),
ACTION brought against the decision of the Second Board of Appeal of OHIM of 11 January 2006 (Case R 1126/2004-2), concerning opposition proceedings between Artoz Papier AG and Deepak Rajani,
THE COURT OF FIRST INSTANCE OF THE EUROPEAN COMMUNITIES (Eighth Chamber),
composed of M.E. Martins Ribeiro, President, S. Papasavvas (Rapporteur) and N. Wahl, Judges,
Registrar: N. Rosner, Administrator,
having regard to the application lodged at the Registry of the Court of First Instance on 26 July 2007,
having regard to the response lodged at the Court Registry on 29 November 2007,
further to the hearing on 26 June 2008,
gives the following
Judgment
Background to the dispute
1 On 9 September 1999, the applicant – Deepak Rajani, a registered trader operating under the trade name Dear!Net Online – lodged an application for a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) under Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as revised and amended.
2 The trade mark for which registration was sought is the word mark ATOZ.
3 The services in respect of which registration was sought fall, inter alia, within Classes 35 and 41 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond, for each of those classes, to the following description:
– Class 35: ‘Drawing up of statements of accounts; auctioneering; advertising agencies; advertising; updating of advertising material; direct mail advertising; distribution of samples and updating of advertising material; dissemination of advertising; rental of advertising space; publicity material rental; bookkeeping; business investigation; business management consultancy and assistance; business management and organisation consultancy; business research and business appraisals; services of inquiries, information, investigation, research, organisation consultancy and appraisals especially in the area of business; professional business consultancy, business organisation consultancy; document reproduction; commercial information agencies; computerised file management; systemisation, updating, compilation, of information into computer databases; cost price analysis; employment agencies; import-export agencies; commercial or industrial management assistance; marketing; marketing studies; arrange newspaper subscriptions for others; opinion polling; organisation of trade fairs and exhibitions for commercial or advertising purposes; public relations; personnel recruitment; personnel management consultancy; payroll preparation; publication of publicity texts; secretarial services; statistical information; wordprocessing’;
– Class 41: ‘Exhibitions for particular purposes and in the nature of specific events especially in the area of education, culture, sports and entertainment; cultural and club services; educational and entertainment services; electronic publishing services; news shows (entertainment, namely, television); organisation of shows events; congress; symposiums and conferences; television programmes and production; lottery services; conducting workshops and seminars; providing facilities for recreational activities; publication of books and magazines’.
4 The application for a Community trade mark was published in Bulletin of Community Trade Marks No 93/2001 of 29 October 2001.
5 On 28 January 2002, Artoz Papier AG filed a notice of opposition with OHIM against the registration of the trade mark applied for, on the basis of its earlier word mark ARTOZ, protected in Germany, Spain, France, Italy, Austria, Portugal and the Benelux by international registration 659480 (‘the international registration’), which was filed and registered at the International Bureau of the World Intellectual Property Organisation (WIPO) on 29 March 1996, inter alia for the following services:
– Class 35: ‘Advertising, divulging, renting and distribution of advertisements, of advertising material, of leaflets, prospectus, printed matters, samples; demonstration of goods, distribution of samples for advertising purposes, advertising by mail, document reproduction, publication of publicity texts, window displays, business, business management, consultancy and necessary means for business organisation; marketing research, public relations’;
– Class 41: ‘Teaching, entertainment, education’.
6 The ground relied upon in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 40/94. The opposition was filed against registration of the trade mark applied for in respect of the services listed in paragraph 3 above and was based on the services listed in paragraph 5 above.
7 On 14 October 2002, the applicant requested proof of use of the international registration. Artoz Papier did not adduce any proof but stated that the international registration had been admitted to protection in Germany on 11 February 1999.
8 By decision of 29 September 2004, the Opposition Division of OHIM upheld the opposition in its entirety under Article 8(1)(b) of Regulation No 40/94, holding that the international registration was not subject to the use requirement and that there was a likelihood of confusion on the part of the German public.
9 On 29 November 2004, the applicant lodged an appeal with OHIM against the Opposition Division’s decision.
10 By decision of 11 January 2006 (‘the contested decision’), the Second Board of Appeal of OHIM dismissed the appeal on the grounds that, in Germany, the international registration was not subject to a use requirement; that the services covered by the trade marks at issue were identical; that the signs were similar; and that there was a likelihood of confusion on the part of German consumers.
11 The Board of Appeal noted, inter alia, in paragraphs 17 to 20 of the contested decision, that, under Article 43(2) and (3) and Article 8(2)(a)(iii) of Regulation No 40/94, a request for proof of use can be accepted only if, at the time of publication of the trade mark application, the earlier international trade mark has been registered for not less than five years. It then noted, in paragraphs 21 to 24 of the contested decision, that it followed from a teleological interpretation of Article 43(2) of Regulation No 40/94, read in conjunction with Article 10 of 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), that the date on which that five-year period began to run was the date of the actual completion of the registration procedure. In the Board’s view, that interpretation is necessary in order to ensure equal treatment between earlier national trade marks which originate from a legal system in which any opposition proceedings take place after the trade mark is entered in the register and those which originate from a legal system in which opposition proceedings take place before registration. Moreover, an international registration does not become final until, at the earliest, the expiry of the period specified in Article 5(2) of the Madrid Agreement Concerning the International Registration of Marks of 14 April 1891, as revised and amended (‘the Madrid Agreement’), since the Madrid Agreement merely provides a procedural short-cut enabling a number of national trade mark applications to be filed through one application.
Procedure and forms of order sought
12 By letter lodged at the Registry of the Court of First Instance on 28 March 2006 the applicant applied, under Article 94 of the Rules of Procedure of that Court, for legal aid in order to bring the present action.
13 By order of 5 July 2007 the President of the Fourth Chamber of the Court of First Instance allowed the applicant’s application for legal aid, designated his present lawyer to represent him and authorised payment of EUR 4 000 to that lawyer.
14 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM to pay the costs.
15 OHIM contends that the Court should:
– dismiss the application;
– order the applicant to pay the costs.
The action
16 In support of his action, the applicant relies on three pleas in law, alleging (i) infringement of Article 43(2) and (3) of Regulation No 40/94; (ii) infringement of Article 8(1)(b) of Regulation No 40/94; and (iii) infringement of Articles 73 and 79 of Regulation No 40/94 and of Article 6 of the European Convention for the Protection of Human Rights and Fundamental Freedoms (ECHR), signed in Rome on 4 November 1950.
First plea in law: infringement of Article 43(2) and (3) of Regulation No 40/94
Arguments of the parties
17 The applicant maintains that the Board of Appeal was wrong in considering that the five-year time-limit provided for in Article 43(2) of Regulation No 40/94 started to run on 11 February 1999, the date on which the registration procedure at the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office) was completed. In his view, the starting point for that time-limit was the date on which the international registration procedure at the International Bureau of WIPO came to an end, that is to say, 29 March 1996. Thus, at the time of publication of the application for registration of the trade mark sought – 29 October 2001 – the earlier trade mark was subject to the use requirement.
18 In the first place, the applicant states that, although Directive 89/104 leaves Member States free to adopt a date as from which a trade mark is finally protected, this does not mean that that date is also the date from which the five‑year time-limit starts to run. Under Directive 89/104, the decisive date for calculating the five-year time-limit is ‘the date of the completion of the registration procedure’, a date which may come before or after the date on which final protection is granted. In the present case, the relevant date is the date on which the International Bureau of WIPO officially terminated the registration procedure.
19 In the second place, the applicant maintains that the relevant dates for calculating the five-year time-limit must be certain and unambiguous. The use requirement is intended to allow others to register a sign which has not been used for five years and is thus unduly blocking their interests.
20 In that regard, first, the applicant points out that the Madrid Agreement does not contain provisions relating to the duration and calculation of the above time-limit. Article 4(1) of that agreement, however, guarantees that international registrations are treated like national registrations, having regard to Article 5(C) of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended (‘the Paris Convention’). In addition, under Article 3(4) of the Madrid Agreement, the registration procedure at the International Bureau of WIPO comes to an end on the date on which the international registration is entered in the international register, and as of that date it is fully protected. The provisions relating to provisional refusal of protection of the international registration by national trade mark offices, to the one-year time-limit referred to in Article 5(2) of the Madrid Agreement and to the possibility of filing opposition against national protection do not influence the date of registration.
21 Secondly, the applicant maintains that, under Article 1 of Directive 89/104, the provisions of that directive apply to international registrations protected in a Member State. Thus, the phrase ‘the date of the completion of the registration procedure’ in Article 10 of that directive can be interpreted only as meaning the date on which the International Bureau of WIPO has terminated the registration procedure, because no other interpretation can be read into Article 3(4) of the Madrid Agreement. That interpretation has the advantage of legal certainty since it enables the five-year time-limit for international registrations to be calculated reliably.
22 In the third place, the applicant states that Paragraph 112 of the Gesetz über den Schutz von Marken und sonstigen Kennzeichen (Markengesetz – MarkenG) of 25 October 1994 (German Law on the Protection of Trade Marks and other Distinctive Signs, BGBl. 1994 I, p. 3082, and BGBl. 1995 I, p. 156, as revised and amended; ‘the Markengesetz’) takes the date on which the registration procedure at the International Bureau of WIPO comes to an end as the date on which a German trade mark would have been entered in the register. As from that date, the international registration is fully protected in Germany.
23 By allowing a period of one year for the national offices to raise objections, Article 5(2) of the Madrid Agreement and the rules set out in Paragraphs 115 and 117 of the Markengesetz are, in the applicant’s view, the exception whilst the presumption laid down in Paragraph A(1) of Article 6 quinquies of the Paris Convention is the general rule. By adding, of its own motion, the one-year time‑limit to the five-year time-limit, OHIM turned the exception into the general rule. According to the applicant, Article 5(2) of the Madrid Agreement lays down a time-limit for raising objections, after which the registration decision of the International Bureau of WIPO becomes finally binding for the national offices but not for the owner of the international registration, which means that that time-limit cannot be added to the five-year time-limit. Thus, by attributing to Article 5(2) of the Madrid Agreement a meaning which it cannot have, the Board of Appeal infringed that provision.
24 In the fourth place, the applicant states that the Board of Appeal considered, on the basis of a teleological interpretation, that the period in which opposition proceedings take place in the country concerned must not be taken into account for the purposes of calculating the five-year time-limit. Since any interpretation must give full effect to Article 10 of Directive 89/104 and Article 5 of the Madrid Agreement, the applicant is of the opinion that such an interpretation – which would lead that time-limit to be extended indefinitely – and Paragraphs 115 and 117 of the Markengesetz are incompatible with Article 10 of that directive and the principle of legal certainty.
25 Moreover, in the applicant’s view, the interpretation adopted by the Board of Appeal takes into consideration only the interests of the owner of the earlier trade mark, whereas a teleological interpretation should also take into account the interests of the trade mark applicant, so that the latter is not deprived, in breach of the principle of legal certainty, of the right to use and register a sign which he considers free. According to the applicant, the trade mark applicant should not have to bear alone the risk the trade mark owner takes by registering signs without carefully researching the market, the registers and the laws applying.
26 In the fifth place, the applicant states that Article 43(2) and (3) of Regulation No 40/94 refers only to the ‘registration date’, which, in accordance with Article 10 of Directive 89/104, is 29 March 1996. Article 43(3) of Regulation No 40/94 refers to national laws only with regard to the relevant territory. Moreover, Article 8(2)(a)(iii) of Regulation No 40/94 refers to international registrations which have effect in a Member State, and the international registration has had effect in Germany since 29 March 1996. According to the applicant, the contested decision was therefore in breach of Article 43 of Regulation No 40/94. The applicant states in that regard that the judgment of the Court of Justice in Case C‑246/05 Häupl [2007] ECR I‑4673 cannot be regarded as a binding precedent to the contrary and can be considered only with respect to the validity of a national law referring to the duration of the five-year time-limit.
27 OHIM disputes the applicant’s arguments.
Findings of the Court
28 It should be noted at the outset that, when questioned on this point at the hearing, the applicant stated that by this plea in law he was alleging infringement of Article 43(2) and (3) of Regulation No 40/94, not misuse of powers.
29 Since the applicant considers that the five-year time-limit provided for in Article 43(2) of Regulation No 40/94 began to run on 29 March 1996, the date on which the international registration took place at the International Bureau of WIPO, it is necessary to determine whether the Board of Appeal was wrong in taking 11 February 1999 – the date on which the registration procedure at the German Patent and Trade Mark Office was completed – as the starting point for that time-limit.
30 In the first place, it should be noted that Article 43(2) of Regulation No 40/94 provides: ‘[i]f the applicant so requests, the proprietor of an earlier Community trade mark who has given notice of opposition shall furnish proof that, during the period of five years preceding the date of publication of the Community trade mark application, the earlier Community trade mark has been put to genuine use in the Community in connection with the goods or services in respect of which it is registered and which he cites as justification for his opposition, … provided the earlier Community trade mark has at that date been registered for not less than five years’ and ‘[i]n the absence of proof to this effect, the opposition shall be rejected’.
31 Moreover, Article 43(3) of Regulation No 40/94 states that ‘[p]aragraph 2 shall apply to earlier national trade marks referred to in Article 8(2)(a), by substituting use in the Member State in which the earlier national trade mark is protected for use in the Community’. Article 8(2)(a)(iii) of that regulation states that “[e]arlier trade marks” means: trade marks of the following kinds with a date of application for registration which is earlier than the date of application for registration of the Community trade mark …: trade marks registered under international arrangements which have effect in a Member State’. Thus, contrary to the applicant’s assertion (see paragraph 26 above), Article 43(3) of Regulation No 40/94 does not refer to Article 8(2)(a) thereof only with regard to the relevant territory.
32 It is therefore clear from Article 8(2)(a)(iii) of Regulation No 40/94, read in conjunction with Article 43(2) and (3) thereof, that the Board of Appeal was right to consider that Article 43(2) of Regulation No 40/94 also applied to earlier international registrations having effect in a Member State and that the five-year time-limit ran from their ‘registration’.
33 In the second place, as regards international registrations, Article 4(1) of the Madrid Agreement provides that ‘[f]rom the date of the registration … at the International Bureau [of WIPO] …, the protection of the mark in each of the contracting countries concerned shall be the same as if the mark had been filed therein direct’. Article 5(1) of that agreement states that ‘[i]n countries where the legislation so authorises, Offices notified by the International Bureau [of WIPO] of the registration of a mark … shall have the right to declare that protection cannot be granted to such mark in their territory’. Moreover, Article 5(2) of the Madrid Agreement provides that ‘Offices wishing to exercise such right must give notice of their refusal to the International Bureau [of WIPO], together with a statement of all grounds, within the period prescribed by their domestic law and, at the latest, before the expiration of one year from the date of the international registration of the mark’.
34 In the present case, it is clear from the assertions made by OHIM, which have not been challenged by the applicant, that the German Patent and Trade Mark Office made such a declaration through its provisional partial refusal of 3 April 1997. Moreover, since no time-limit is provided for in German law, the maximum time‑limit of one year provided for in Article 5(2) of the Madrid Agreement applies. As that time-limit began to run on 13 February 1997 – the date of the entry in the international register – that declaration was made in good time.
35 It should be noted that neither Regulation No 40/94 nor the Madrid Agreement specifies the date on which the five-year time-limit begins to run in the case of an international registration having effect in a Member State. In the absence of relevant provisions in those legal instruments, it must be held that this is a matter for the national law of the Member State concerned.
36 Although national trade mark law was harmonised by Directive 89/104 and that directive applies, pursuant to Article 1 thereof, to ‘every trade mark which is the subject of … an international registration having effect in a Member State’, it is clear from Häupl (paragraphs 26 to 31) that Directive 89/104 does not harmonise the procedural aspect of trade mark registration and it is thus for the Member State for which the registration application has been filed to determine, in accordance with its own procedural rules, the time at which the registration procedure comes to an end.
37 It must therefore be held that, in the present case, since the Board of Appeal based the contested decision on an earlier international registration having effect in Germany, reference must be made to German trade mark law both for the date on which the international registration first took effect in Germany and for the starting point for the five-year time-limit.
38 In that regard, it should be noted that Paragraph 112(1) of the Markengesetz provides that ‘[i]nternational registration of a trade mark whose protection has been extended, under Article 3ter of the Madrid Agreement …, to the territory of the Federal Republic of Germany shall have the same effect as if the filing and registration of the trade mark had been made at the [German Patent and Trade Mark Office] at the date of the international registration under Article 3(4) of the Madrid Agreement … or at the date of the registration of the subsequent extension of protection under Article 3ter(2) of the Madrid Agreement’. Paragraph 112(2) of the Markengesetz states that ‘[t]he effect described in subparagraph 1 shall be regarded as not having taken place if protection is refused for the trade mark internationally registered in accordance with Paragraphs 113 to 115’. It follows that, in principle, the registration is regarded as having taken place in Germany on the same day as the international registration, although that is not the case if protection is refused following consideration of the absolute grounds for refusal (Paragraph 113 of the Markengesetz), opposition proceedings (Paragraph 114 of the Markengesetz) or subsequent withdrawal of protection (Paragraph 115 of the Markengesetz).
39 In the present case, however, protection was provisionally refused but subsequently granted, and Paragraph 112 of the Markengesetz does not specify what the consequences are in such circumstances as regards determination of the date of registration.
40 However, Paragraph 117 of the Markengesetz provides that ‘[i]f, in the event of infringement of a trade mark that has been internationally registered, the rights provided for in Paragraphs 14, 18 and 19 are claimed, Paragraph 25 shall apply, except that the date of registration of the trade mark shall be replaced with the date referred to in Paragraph 115(2)’.
41 In that regard, first, it should be noted that Paragraph 25(1) of the Markengesetz provides that ‘[t]he proprietor of a registered trade mark may not rely, as against third parties, upon the rights provided for in Paragraph 14 [exclusive right of the proprietor of a trade mark; right to rely on the obligation not to act; right to claim damages], Paragraph 18 [right to the destruction of goods unlawfully bearing the trade mark] and Paragraph 19 [right to information on the origin and means of distribution of goods unlawfully bearing the trade mark] where, during the preceding five years, the mark has not been used … in connection with the goods or services in respect of which he claims those rights, provided that the trade mark has at that date been registered for not less than five years’. Paragraph 25(2) provides that ‘[w]here an action is brought in order to assert the rights provided for in Paragraphs 14, 18 and 19 in the event of infringement of a registered trade mark, the applicant must, in reply to the respondent’s objections, prove that the trade mark has been used …, during the five years before the action was brought, in connection with the goods or services in respect of which he claims those rights, provided that the trade mark has at that date been registered for not less than five years’.
42 Secondly, Paragraph 115(2) of the Markengesetz states that ‘[i]f an application to withdraw protection is made … on grounds of lack of use, the date of entry in the national register shall be replaced by the date of expiry of the time-limit laid down in Article 5(2) of the Madrid Agreement on trade marks … or if, on the expiry of that time-limit, the proceedings referred to in Paragraphs 113 [consideration of absolute grounds for refusal] and 114 [opposition proceedings] have not yet ended, by the date on which the International Bureau of [WIPO] receives final notification concerning the grant of protection’.
43 It follows that if, in Germany, an applicant for a trade mark seeks proof of use of an earlier international registration in respect of which the German Patent and Trade Marks Office first made a declaration under Article 5 of the Madrid Agreement, but to which it later granted protection, the date of receipt by the International Bureau of WIPO of the final notification of the granting of protection constitutes the starting point for the calculation of the five-year time‑limit. In the context of the German procedures, that date is therefore the date on which the registration procedure for an international registration is regarded as being completed.
44 In those circumstances, for the purposes of applying Paragraph 112 of the Markengesetz, it must be held that it is clear from Paragraph 117 of the Markengesetz, read in conjunction with Paragraph 115(2) thereof, that if protection for an internationally registered trade mark is provisionally refused but subsequently granted, the registration is regarded as having taken place on the date of receipt by the International Bureau of WIPO of the final notification that protection has been granted. Consequently, that date must be regarded as marking the starting point for the calculation to be made with regard to Article 43(2) and (3) of Regulation No 40/94.
45 In that regard, it should be noted that, contrary to the applicant’s argument, the date of the international registration is not the only date which meets the requirements of the principle of legal certainty. The dates held by the Board of Appeal to be relevant for the purposes of calculating the five-year period are just as certain and unambiguous. As the Board of Appeal pointed out, they also meet the requirements of the principle of equal treatment – both as between national trade marks of different origins and as between the latter and international trade marks – and ensure consistency between the starting point for effective protection in a particular Member State and the use requirement in its territory.
46 Thirdly, as regards the complaint that by adding, of its own motion, the one-year time-limit to the five-year time-limit, the Board of Appeal turned the exception into the general rule, it should be noted that Paragraph 115(2) of the Markengesetz provides for such addition as a general rule. Moreover, OHIM rightly pointed out that an applicant for an international trade mark cannot be required to use and invest in the trade mark applied for before he knows whether the latter does actually enjoy the protection sought in the territory concerned, which was not the position before the expiry of the time-limit laid down in Article 5(2) of the Madrid Agreement.
47 Fourthly, as regards the argument that the Board of Appeal’s teleological interpretation and Paragraphs 115 and 117 of the Markengesetz infringe Article 10 of Directive 89/104 and the principle of legal certainty, it should be noted that that directive does not harmonise the procedural aspect of trade mark registration and it is thus for the Member State to determine the time at which the registration procedure comes to an end (Häupl, paragraphs 26 to 31). Consequently, neither the Appeal Board’s teleological interpretation nor Paragraphs 115 and 117 of the Markengesetz infringe Article 10 of that directive.
48 Fifthly, since the applicant maintains that a teleological interpretation must also take into account the interests of the trade mark applicant, suffice it to say that taking those interests into account must not in any event lead to an interpretation that conflicts with the findings made in paragraphs 30 to 46 above.
49 It follows that, in the present case, the Board of Appeal was right to hold that the starting point for the five-year time-limit was 11 February 1999 and that that time‑limit had not expired at the date of the publication of the application for the trade mark sought, 29 October 2001. Accordingly, the applicant’s request for proof of use of the international registration must be rejected.
50 In the light of all the foregoing, the first plea in law must be rejected.
Second plea in law: infringement of Article 8(1)(b) of Regulation No 40/94
Arguments of the parties
51 The applicant argues that the contested decision infringes Article 8(1)(b) of Regulation No 40/94 because the signs at issue are dissimilar, with the result that there is no likelihood of confusion.
52 The applicant accepts that, as ‘artoz’ is an invented term, it conveys no particular concept or meaning. However, the German consumer would understand the term ‘atoz’ as conveying the concept of ‘from A to Z’. It is clear in particular from some printouts from German websites that are annexed to the application that the German consumer is used to reading the term ‘atoz’ presented in different forms (‘Atoz’, ‘ATOZ’ and ‘atoz’), and according to it the particular meaning referred to by the applicant. The initial and most obvious phrase ‘from A to Z’ has, through constant use and custom in business circles, been contracted, first to ‘AtoZ’, then to ‘atoz’ or ‘ATOZ’. Moreover, since it is clear from the annexes to the application that the signs ‘A to Z’, ‘AtoZ’, ‘A Z’ and ‘AbisZ’ (AtoZ) have been registered, the sign ATOZ is still fanciful. In view of the fact that, until now, the applicant has not been represented by a lawyer, the applicant maintains that it was for the Board of Appeal to point out and consider that information. He also argues that, according to the case-law, the fact that one of the signs has a clear meaning and the other has no meaning outweighs otherwise (potentially) existing similarities and rules out any likelihood of confusion.
53 Furthermore, the applicant submits that the phonetic differences between the signs at issue are clear enough to rule out the possibility of confusion. The trade mark applied for will be pronounced ‘eïtouzed’, in accordance with the English rules of pronunciation, since the German consumer has an adequate command of the English language, English being the most commonly-spoken foreign language in Germany and a compulsory subject in schools. However, the earlier registration will be pronounced, in accordance with the German rules of pronunciation, ‘[aar’ tots]’. Although, according to German pronunciation, the consonant ‘r’ in combination with the vowel ‘a’ is guttural, the vowel ‘a’ will be elongated and emphasised, and followed by a short pause before the next syllable. Thus, the Board of Appeal did not take account of the fact that the signs follow different rules of pronunciation and there are no phonetic similarities.
54 OHIM disputes the applicant’s arguments.
Findings of the Court
55 First of all, it should be noted that, 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 must not be registered if, because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the two 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.
56 There is a likelihood of confusion where there is a risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings (Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 17; see Case T‑162/01 Laboratorios RTB v OHIM – Giorgio Beverly Hills (GIORGIO BEVERLY HILLS) [2003] ECR II‑2821, paragraphs 30 to 32 and the case-law cited therein) when in fact those goods or services come from different undertakings. The question whether there is a likelihood of confusion on the part of the relevant public must therefore be assessed globally, taking into account all factors relevant to the circumstances of the case. So far as the visual, aural or conceptual similarity of the marks in question is concerned, that global assessment must be based on the overall impression given by the marks, account being taken, in particular, of their distinctive and dominant components (Case C‑251/95 SABEL [1997] ECR I‑6191, paragraphs 22 and 23; Case T‑104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II‑4359, paragraphs 25 and 26; and Case T‑292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II‑4335, paragraph 47).
57 For the purposes of that global assessment, account should be taken of the profile of the relevant consumer and of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. Finally, in order to assess the degree of similarity between the marks concerned, the court having jurisdiction must determine the degree of visual, aural or conceptual similarity between them and, where appropriate, evaluate the importance to be attached to those different elements, taking account of the category of goods or services in question and the circumstances in which they are marketed (Lloyd Schuhfabrik Meyer, paragraphs 26 and 27, and Case C‑334/05 P OHIM v Shaker [2007] ECR I‑4529, paragraphs 35 and 36).
58 In the present case, in the first place, as regards the relevant public, it should be noted that the Board of Appeal based the contested decision on an earlier international registration having effect in Germany. It follows that the relevant public is the German public. In view of the services in respect of which the trade mark was applied for, it is necessary to regard the relevant public as both the average consumer and German professionals, with the possibility that the latter may have a higher than average level of attentiveness.
59 In the second place, it is common ground that the services listed in paragraphs 3 and 5 above are identical.
60 In the third place, as regards the similarity of the trade marks at issue, it should be noted, first, from the visual point of view, that all the letters of the earlier trade mark are reproduced in the trade mark applied for, with the exception of the letter ‘r’. It must therefore be held that, both for the average consumer and for a more observant public, such as German professionals, the impression which remains after seeing the marks at issue is that of a visual configuration that is very similar. As OHIM rightly points out, that is reinforced by the fact that members of the relevant public only rarely have the chance to make a direct comparison between the different marks but must place their trust in the imperfect picture of them that they have kept in their minds (see paragraph 57 above).
61 Secondly, as regards the conceptual aspect, it is common ground that the mark ARTOZ has no meaning. In the case of the trade mark applied for – ATOZ – it should be noted that the group of letters ‘to’ is in no way made to stand out from the letters ‘a’ and ‘z’. Indeed, since the mark is a word mark, it must be regarded as being written in a non-stylised way (see, to that effect, Case T‑22/04 Reemark v OHIM – Bluenet (Westlife) [2005] ECR II‑1559, paragraph 34). Consequently, the English preposition ‘to’ does not have an independent position and the relevant public will initially perceive the mark as a whole. Thus, since the trade mark applied for does not present any difficulty as regards pronunciation in German and is not of a particular nature which causes the person reading it to wonder about its meaning in other languages, it must be held that, as OHIM notes, it is extremely unlikely that the average consumer will proceed to analyse the various details of the mark applied for, to break it down into the elements ‘A to Z’ and to give it its English meaning. Likewise, there is no reason why professionals would engage in a linguistic analysis in order to discover a possible meaning in a language other than German.
62 Moreover, the applicant has not demonstrated the truth of its assertion that, in the mind of the relevant public, the trade mark applied for has the meaning ‘from A to Z’ by dint of constant use and custom in business circles. In that regard, it should be noted that the annexes to the application, comprising printouts of websites and databases relating to trade marks, are new evidence which, under Article 135(4) of the Rules of Procedure of the Court of First Instance, cannot be produced for the first time before the Court of First Instance and must therefore be rejected as inadmissible (Case T‑128/01 DaimlerChrysler v OHIM(Grille) [2003] ECR II‑701, paragraph 18).
63 It must therefore be concluded that neither of the trade marks at issue conveys a particular concept or meaning.
64 Thirdly, as regards the phonetic aspect, OHIM rightly points out – as did the Board of Appeal – that, because of the German guttural pronunciation, the consonant ‘r’ when placed between the vowel ‘a’ and the consonant ‘t’ tends to be absorbed into a single sound by the vowel that precedes it. Even though, as the applicant argues, the vowel ‘a’ may be drawn out in spoken German, the result is that the pronunciation in German of the trade marks at issue is almost identical. Moreover, it follows from the finding in paragraph 63 above that the applicant’s argument that the relevant public will pronounce the trade mark applied for in accordance with the English rules of pronunciation is unfounded, since the mark will not be perceived by the relevant public as a shortened form of the English expression ‘from A to Z’.
65 In the light of the foregoing, it must be held, first, that the trade marks at issue present, visually and phonetically, a high degree of similarity and, second, that they cannot be distinguished conceptually because they have no particular meaning.
66 Accordingly, in view of the high degree of similarity of the trade marks and the identical nature of the services in question, it must be concluded that the Board of Appeal was right in holding that there was a likelihood of confusion on the part of the relevant public.
67 The second plea in law must therefore be rejected.
Third plea in law: infringement of Articles 73 and 79 of Regulation No 40/94 and of Article 6 of the ECHR
Arguments of the parties
68 First, the applicant points out that it argued before the Opposition Division that the concepts conveyed by the trade marks at issue were sufficiently different and that ATOZ was understood by the German consumer as meaning ‘from A to Z’. In stating that no concepts could be found within the trade marks at issue, the Opposition Division did not properly substantiate its decision.
69 Secondly, the applicant acknowledges that the Board of Appeal considered its arguments. However, the Board of Appeal did not carry out an appraisal of the language skills of the German customers, as referred to by the applicant.
70 Thirdly, the applicant submits that it follows from the decision-making practice of the Boards of Appeal that the contested decision cannot cure the infringement of the applicant’s procedural rights inasmuch as he was deprived of an instance in proceedings.
71 Thus, according to the applicant, both the decision of the Opposition Division and the contested decision infringe the obligation to state reasons laid down in Article 73 of Regulation No 40/94. They also infringe the applicant’s right to be heard, laid down in Article 73 of that regulation, which is in turn based on Article 79 of that regulation and Article 6 of the ECHR, the right to be heard being a fundamental right common to all the Member States and the Community institutions.
72 OHIM disputes the applicant’s arguments.
Findings of the Court
73 As a preliminary point, it should be noted that it is only the contested decision that is the subject of the present action. In consequence, the applicant’s arguments concerning the decision of the Opposition Division are not relevant. Moreover, it should be borne in mind that the obligation to state reasons is an essential procedural requirement (Case C‑17/99 France v Commission [2001] ECR I‑2481, paragraph 35), infringement of which can be corrected by a decision of a board of appeal, and not a procedural right, infringement of which by the Opposition Division would unlawfully deprive the applicant, as he claims, of ‘an instance in proceedings’.
74 In the first place, as regards the statement of the reasons for the contested decision, it should be noted that, under Article 73 of Regulation No 40/94, decisions of OHIM must state the reasons on which they are based, and the obligation to state reasons, as thus laid down, has the same scope as that which derives from Article 253 EC, as interpreted by settled case-law. According to that case-law, the statement of reasons must disclose in a clear and unequivocal manner the reasoning followed by the institution which adopted the measure in question in such a way as to enable the persons concerned to ascertain the reasons for the measure and defend their rights and to enable the Community judicature to review the legality of the decision (Case C‑447/02 P KWS Saat v OHIM [2004] ECR I‑10107, paragraphs 63 to 65; Joined Cases T‑124/02 and T‑156/02 Sunrider v OHIM – Vitakraft-Werke Wührmann and Friesland Brands (VITATASTE and METABALANCE 44) [2004] ECR II‑1149, paragraphs 72 and 73; and the judgment of 12 December 2007 in Case T‑117/06 DeTeMedien v OHIM(suchen.de), not published in the ECR, paragraph 46). In the present case, it is clear from the analysis of the second plea in law (see paragraphs 58 to 67 above) that the contested decision enabled the applicant to defend his rights and the Court of First Instance to exercise its power of review.
75 Moreover, it should be noted that, in stating the reasons for the decisions which they are led to take, the institutions are not obliged to adopt a position on all the arguments relied on before them by the parties concerned. It is sufficient if they set out the facts and legal considerations having decisive importance in the context of the decision (see, to that effect, Case T‑204/03 Haladjian Frères v Commission [2006] ECR II‑3779, paragraph 199). It must be concluded in that regard that it is clear from paragraph 28 of the contested decision that the Board of Appeal impliedly rejected the applicant’s argument concerning the language skills of the relevant public.
76 In the second place, with regard to the alleged infringement of the right to be heard owing to the fact that the Board of Appeal did not properly address the points of fact raised by the applicant, it should be borne in mind that the second sentence of Article 73 of Regulation No 40/94 requires the OHIM Boards of Appeal to base their decisions only on matters of fact or of law on which the parties have been able to set out their views (KWS Saat v OHIM, paragraphs 41 and 42). Thus, the protection conferred by the right to be heard is limited to that possibility of adopting a position in the light of the relevant facts and legal considerations (judgment of 21 November 2007 in Case T‑111/06 Wesergold Getränkeindustrie v OHIM – Lidl Stiftung (VITAL FIT), not published in the ECR, paragraph 57). As regards the present case, suffice it to note that the applicant was able to submit his observations on all the matters of fact and of law on which the Board of Appeal based the contested decision and that the Board of Appeal therefore fully respected the applicant’s right to be heard. In any event, it must be held that, by his claims, the applicant is in fact again complaining that the Board of Appeal did not expressly adopt a position on all the arguments he raised before it. As it is, that argument has already been rebutted in paragraph 75 above.
77 The third plea in law must be rejected on those grounds.
78 In the light of all the foregoing, the action must be dismissed.
Costs
79 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. As the applicant has been unsuccessful, he should be ordered to pay the costs, as applied for by OHIM.
On those grounds,
THE COURT OF FIRST INSTANCE (Eighth Chamber)
hereby:
1. Dismisses the action;
2. Orders Deepak Rajani to pay the costs.
Martins Ribeiro | Papasavvas | Wahl |
Delivered in open court in Luxembourg on 26 November 2008.
[Signatures]