JUDGMENT OF THE GENERAL COURT (Third Chamber)
5 December 2013 (*)
(Community trade mark – Opposition proceedings – Application for the Community figurative mark SOLVO – Earlier Community word mark VOLVO – Relative ground for refusal – No likelihood of confusion – No similarity between the signs – Article 8(1)(b) of Regulation (EC) No 207/2009)
In Case T‑394/10,
Elena Grebenshikova, residing in Saint Petersburg (Russia), represented by M. Björkenfeldt, lawyer,
applicant,
v
Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), represented by A. Folliard-Monguiral, acting as Agent,
defendant,
the other party to the proceedings before the Board of Appeal of OHIM, intervener before the General Court, being
Volvo Trademark Holding AB, established in Gothenburg (Sweden), represented initially by T. Dolde, V. von Bomhard and A. Renck, lawyers, and subsequently by V. von Bomhard, A. Renck, and I. Fowler, Solicitor,
ACTION brought against the decision of the First Board of Appeal of OHIM of 9 June 2010 (Case R 861/2010-1), relating to opposition proceedings between Volvo Trademark Holding AB and Ms Elena Grebenshikova,
THE GENERAL COURT (Third Chamber),
composed of O. Czúcz (Rapporteur), President, I. Labucka and D. Gratsias, Judges,
Registrar: T. Weiler, Administrator,
having regard to the application lodged at the Court Registry on 13 September 2010,
having regard to the response of OHIM lodged at the Court Registry on 13 December 2010,
having regard to the response of the intervener lodged at the Court Registry on 23 December 2010,
having regard to the order of 14 December 2011 staying the proceedings,
further to the hearing on 22 April 2013,
gives the following
Judgment
Background to the dispute
1 On 26 November 2003, the applicant, Ms Elena Grebenshikova, filed an application for registration of a Community trade mark with the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1)).
2 Registration as a mark was sought for the following figurative sign:
3 The goods in respect of which registration was sought are, following the restriction made during the proceedings before OHIM, in Class 9 of the Nice Agreement concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Computer programs for warehouse management systems and computer programs for container terminal systems’.
4 On 17 February 2005, the intervener, Volvo Trademark Holding AB, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (now Article 41 of Regulation No 207/2009) against registration of the mark applied for.
5 The opposition was based, inter alia, on the Community word mark VOLVO, registered under the number 2361087 (‘the earlier mark’), which covers, inter alia, ‘computer software’ in Class 9 and ‘vehicles’ in Class 12.
6 The opposition was based on the grounds referred to in Article 8(1)(b) and (5) of Regulation No 40/94 (now Article 8(1)(b) and (5) of Regulation No 207/2009) and was directed against all the goods referred to in paragraph 3 above.
7 By decision of 23 August 2006, the Opposition Division rejected the opposition on the ground that the signs at issue were not similar. That decision was upheld by the decision of 2 August 2007 of the Second Board of Appeal. Like the Opposition Division, the Second Board of Appeal examined the merits of the opposition by taking into account only the earlier mark. As regards Article 8(1)(b) of Regulation No 40/94, it found that the marks at issue were not similar and that, consequently, one of the conditions referred to by that provision was not satisfied. As regards Article 8(5) of Regulation No 40/94, it found that, in addition to there being no similarity between the marks at issue, there was no ‘factor common’ to both signs which might lead to the belief that there was an economic link between them.
8 By judgment of 2 December 2009 in Case T‑434/07 Volvo Trademark v OHMI – Grebenshikova (SOLVO) [2009] ECR II‑4415, the Court annulled the decision of the Second Board of Appeal. The Court held, in paragraph 50 of its judgment, that the existence of a certain degree of phonetic similarity between the signs at issue precluded the conclusion that one of the essential conditions for the application of Article 8(1)(b) of Regulation No 40/94, namely the similarity of the signs, was lacking. In those circumstances, the Board of Appeal was ‘required to carry out a global assessment of the likelihood of confusion, in order to determine whether, in view of the degree of phonetic similarity found between the signs at issue, of the identity of the goods covered and of the reputation of the earlier sign, the public at which the goods in question [were] aimed might believe that those goods [came] from the same undertaking or from economically-linked undertakings’.
9 The case was referred to the First Board of Appeal (‘the Board of Appeal’).
10 By decision of 9 June 2010 (‘the contested decision’), the Board of Appeal annulled the Opposition Division’s decision, upheld the opposition and rejected the application for the disputed trade mark. It found that the relevant public in the European Union consisted of professionals with a high degree of attention and that the goods covered by the marks at issue were identical. Next, it based its examination of the likelihood of confusion on the Court’s finding that the signs at issue had a certain degree of global similarity based, in particular, on their similar pronunciation. The Board of Appeal found that even though the earlier trade mark did not have a reputation as regards ‘computer software’, its reputation in the field of cars meant that it had a higher degree of distinctive character in the field of information‑technology goods such as software, particularly as most vehicles use computer software. Furthermore, it stated that the visual perception of the marks at issue did not outweigh their phonetic aspect given that the choice of software could be made visually or by an order orally, and that the visual perception of the marks at issue did not always occur prior to purchase, because it was the content, rather than the visual aspect of the software, which was the decisive factor in the act of purchase. Therefore, according to the Board of Appeal, the visual differences could not outweigh the phonetic similarities in such a manner as to exclude a likelihood of confusion.
Forms of order sought
11 The applicant claims that the Court should:
– annul the contested decision;
– order OHIM and the intervener to pay the costs.
12 OHIM and the intervener contend that the Court should:
– dismiss the action;
– order the applicant to pay the costs.
Law
13 In support of its action, the applicant puts forward two pleas in law. The first plea alleges infringement of Article 8(1)(b) of Regulation No 207/2009. The second plea alleges infringement of the principle of equal treatment.
14 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 must not be registered if, because of its identity with, or similarity to, an 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.
15 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, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion. According to the same case-law, the likelihood of confusion must be assessed globally, in accordance with the perception which the relevant public has of the signs and goods or services in question, taking into account all factors relevant to the circumstances of the case (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).
16 That global assessment takes account, in particular, of the recognition of the mark on the market, and of the degree of similarity between the marks and between the goods or services covered. In that respect, it implies some interdependence between the factors taken into account, so that a low degree of similarity between the goods or services covered may be offset by a high degree of similarity between the marks, and vice versa (Case C‑39/97 Canon [1998] ECR I‑5507, paragraph 17, and Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 19).
17 In the present case, it is not disputed that the goods covered by the mark applied for, namely the ‘computer programs for warehouse management systems and computer programs for container terminal systems’ in Class 9, are part of the wider range of goods covered by the earlier mark, namely the ‘computer software’ in Class 9, with the result that the goods covered by the signs at issue are identical. That assessment in the contested decision must be upheld.
The relevant public
18 The Board of Appeal was right to find, without being contradicted by the applicant, that the territory to be taken into account in defining the relevant public consisted of the whole of the European Union.
19 With regard to the relevant consumer of the goods at issue, even if it is accepted that software can constitute everyday consumer goods as well as goods for a professional or specialist public, it is not disputed that the goods covered by the mark applied for must be regarded as aimed solely at professionals such as managers of warehouse complexes or managers of container terminals in seaports. Therefore, the relevant public consists only of that specialist public (see, to that effect, Case T‑126/03 Reckitt Benckiser (España) v OHIM – Aladin (ALADIN) [2005] ECR II‑2861, paragraph 81, and judgment of 26 June 2008 in Case T‑79/07 SHS Polar Sistemas Informáticos v OHIM – Polaris Software Lab (POLARIS), not published in the ECR, paragraph 27).
20 In the contested decision, the Board of Appeal found that that professional public displays a relatively high degree of attention.
21 However, account must also be taken of the fact that the software covered by the mark applied for is aimed at undertakings, is not purchased on a daily basis, may involve significant investments and constitutes an essential work tool for at least some employees, all those factors having the effect that the staff responsible for the choice of software display a particularly high degree of attention when comparing goods from different producers operating on the market (see, to that effect, judgment of 7 July 2010 in Case T‑557/08 mPAY24 v OHIM – Ultra (M PAY), not published in the ECR, paragraph 39).
22 Having regard to those factors, the relevant public’s degree of attention must be held to be particularly high.
The comparison of the signs
23 In paragraph 44 of the judgment in SOLVO, the Court held that the signs at issue were not visually and conceptually similar. It stated, in paragraph 43 of that judgment, that it was unlikely that the consumer in question would perceive the meaning that the marks at issue might have in the light of their Latin roots, since it was in general unlikely that a significant proportion of consumers would make the connection between the terms referred to by those marks and Latin. Consequently, it held that the conceptual comparison played only a very minor role in the present case in the assessment of the similarity of the signs at issue.
24 As regards the phonetic aspect of the comparison, the Court stated, in paragraph 40 of that judgment, that even though the beginning of a sign was of importance in the global impression created by that sign, there was a degree of similarity between the signs at issue, in view of the identical pronunciation to which a very large part of each of the signs at issue gave rise, namely four of their five letters.
25 In the contested decision, the Board of Appeal reiterated the General Court’s findings as regards the visual and phonetic aspects of the comparison, without examining the conceptual aspect.
The likelihood of confusion
26 In the contested decision, the Board of Appeal concluded that there was a likelihood of confusion on the basis of the identity of the goods and the high level of distinctiveness of the earlier mark as regards computer software and on the basis of its finding that the visual dissimilarities between the signs at issue could not outweigh their phonetic similarities, with the result that those signs were globally similar.
27 It must be pointed out that although the distinctive character of the earlier mark must be taken into account in the global assessment of the likelihood of confusion (see, by analogy, Canon, paragraph 24), it is only one factor among others to be included in that assessment (M PAY, paragraph 42).
28 It is also necessary to examine the applicant’s argument that the method of marketing the software in question means that the relevant professional public will inevitably be faced with the image of the sign applied for before making its choice.
29 In that regard, it must be borne in mind that in the global assessment of the likelihood of confusion, the visual, phonetic or conceptual aspects of the signs at issue do not always have the same weight and that it is appropriate to take into account the nature of the goods at issue and to examine the objective conditions under which the marks may be present on the market (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 49; see also, to that effect, Case T‑129/01 Alejandro v OHIM – Anheuser-Busch (BUDMEN) [2003] ECR II‑2251, paragraphs 57 and 58).
30 The degree of phonetic similarity between two marks is of less importance in the case of goods which are marketed in such a way that, when making a purchase, the relevant public usually also perceives visually the mark designating those goods (Case T‑292/01 Phillips-Van Heusen v OHIM – Pash Textilvertrieb und Einzelhandel (BASS) [2003] ECR II‑4335, paragraph 55; Case T‑355/02 Mülhens v OHIM – Zirh International (ZIRH) [2004] ECR II‑791, paragraph 51; and judgment of 16 January 2008 in Case T‑112/06 Inter-IKEA v OHIM – Waibel (idea), not published in the ECR, paragraphs 78 and 79).
31 Furthermore, in its judgment of 26 June 2008 in Case T-79/07 SHS Polar Sistemas Informáticos v OHIM – Polaris Software Lab (POLARIS), not published in the ECR, paragraph 50, the Court already had the opportunity to examine a situation similar to that examined in the present case, as regards the conflict between the marks POLAR and POLARIS covering software aimed at banking undertakings. It held that that the goods at issue were extremely specialised, expensive and often developed over many years in collaboration with the end consumer. In its assessment, the consumers concerned, the staff of financial institutions responsible for the acquisition of such goods, would carry out a scrupulous examination of the products on the market and very probably contact the manufacturers. In the course of that selection process, those consumers would be aware not only of the characteristics of the goods, but also of the identity of the manufacturers and the marks on the market and would therefore be very attentive to even slight differences between those marks.
32 In that regard, in the present case, OHIM submits that the software trade mark at issue is likely to be referred to orally before the decision to purchase is taken. According to OHIM, the software will be customised in order to be adjusted to customers’ needs, which will require collaboration between the software provider and the customer. Furthermore, before customers see the trade mark affixed to the software carrier itself, they are likely to pronounce it during information sessions or pre-negotiation discussions with the software provider.
33 Having regard to the material in the file, the statements of the parties at the hearing and all the circumstances of the case, the Court takes the view that the staff responsible for the choice and purchase of ‘computer programs for warehouse management systems and computer programs for container terminal systems’ will inevitably be faced with the image of the sign applied for before making that choice.
34 It must be borne in mind that the purchase of the software in question constitutes a significant investment on the part of specialist undertakings. The introduction of new logistics software, which is an important component of an undertaking’s computer system, requires that software to be installed on specialised hardware designed for the management of warehouses and container terminals and also involves the training of the staff using it. Furthermore, the importance of that choice is heightened by the impact of the software on the logistical effectiveness of the undertaking.
35 Consequently, even if, as the case may be, the initial information regarding the software is received orally, the fact none the less remains that the employees of the undertaking who are responsible for its acquisition will scrupulously examine the characteristics and the content of that software on account of the importance of their choice. For those employees, such an examination may consist of studying the written presentation of the software or a trial version of it as well as of visiting the provider’s website or of meetings with the provider’s employees. During that examination, which may be carried out in several stages following a call for tenders, the employees of the customer undertaking will inevitably see the image of the sign applied for, given that it is on the producer’s promotional documents and appears on its website.
36 Furthermore, in the course of that elaborate selection process, the users will be aware not only of the characteristics of the goods, but also of the identity of the producers and the marks on the market and will therefore be very attentive to even slight differences between those marks.
37 OHIM’s argument that the software in question may be ordered orally is irrelevant since consumers will inevitably be faced with the image of the sign applied for during the selection process, with the result that the doubts which the phonetic similarities may have given rise to regarding the commercial origin of the goods will be dispelled by the readily perceptible visual differences which distinguish the signs at issue. In any event, it is apparent from the case-law cited in paragraph 30 above that the phonetic aspect of the comparison of the signs retains its importance only if the consumer is not usually able to compare the signs visually during the process of selecting the product.
38 Having regard to those considerations, in the present case the visual dissimilarities outweigh the phonetic similarities between the signs at issue, contrary to what the Board of Appeal found. Therefore, in spite of the identity of the goods and the high level of distinctiveness of the earlier mark, there is no likelihood that the consumers, who are particularly attentive and wish to ascertain the identity of the producer, may think that the goods covered by the signs at issue come from the same undertaking or, as the case may be, from economically-linked undertakings.
39 Consequently, the Board of Appeal erred in finding that there was a likelihood of confusion.
40 In the light of all of the foregoing, the contested decision must be annulled, without there being any need to examine the applicant’s other pleas and arguments.
Costs
41 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. Where there are several unsuccessful parties the Court is to decide how the costs are to be shared.
42 In the present case, OHIM and the intervener have been unsuccessful. In addition, the applicant has applied for OHIM and the intervener to be ordered to pay the costs.
43 Accordingly, OHIM must be ordered to pay, in addition to its own costs, two thirds of the applicant’s costs and the intervener must be ordered to pay, in addition to its own costs, one third of the applicant’s costs.
On those grounds,
THE GENERAL COURT (Third Chamber)
hereby:
1. Annuls the decision of the First Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) of 9 June 2010 in Case R 861/2010‑1;
2. Orders OHIM to pay, in addition to its own costs, two thirds of the costs incurred by Ms Elena Grebenshikova;
3. Orders Volvo Trademark Holding AB to pay, in addition to its own costs, one third of the costs incurred by Ms Grebenshikova.
Delivered in open court in Luxembourg on 5 December 2013.
[Signatures]